pct status report swaziland st. kitts and nevis sweden switzerland syrian arab republic tajikistan...
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June 1, 1978: commencement of PCT filings 18 Member States 5 International Authorities 10 PCT staff at the International Bureau of WIPO
Key Moments in PCT History
Key Moments in PCT History
• 26 years to 1st million• 7 years to 2nd million• 5 years to 3rd million
PCT Applications
0
50000
100000
150000
200000
250000
78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08 10 12 14 16
2017: 243,500 (+4.5%)
=PCT
AlbaniaAlgeriaAngolaAntigua and BarbudaArmeniaAustraliaAustriaAzerbaijanBahrainBarbadosBelarusBelgiumBelizeBeninBosnia and HerzegovinaBotswana BrazilBrunei DarussalamBulgariaBurkina FasoCambodiaCameroonCanadaCentral African RepublicChadChileChina Colombia Comoros Congo
Costa RicaCôte d'IvoireCroatiaCubaCyprusCzech RepublicDemocratic People's
Republic of KoreaDenmarkDjibouti DominicaDominican RepublicEcuadorEgyptEl SalvadorEquatorial Guinea EstoniaFinlandFrance,
GabonGambiaGeorgia GermanyGhana GreeceGrenadaGuatemalaGuinea
Guinea-Bissau HondurasHungaryIcelandIndiaIndonesiaIran (Islamic Republic of)Ireland IsraelItalyJapanJordan KazakhstanKenyaKuwait KyrgyzstanLao 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 ArabiaSenegalSerbiaSeychellesSierra 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
152 PCT States
UN Member States not yet in PCTAfghanistanAndorraArgentinaBahamasBangladeshBhutanBoliviaBurundiCape VerdeDemocratic Republic of
CongoEritreaEthiopiaFijiGuyanaHaitiIraqJamaica
KiribatiLebanonMaldivesMarshall IslandsMauritiusMicronesiaMyanmarNauruNepalPakistanPalauParaguaySamoaSolomon IslandsSomaliaSouth SudanSuriname
Timor-LesteTongaTuvaluUruguayVanuatuVenezuelaYemen
(41)
0
10,000
20,000
30,000
40,000
50,000
60,000
US CN JP DE KR FR GB CH NL SE IT CA AU IL IN
International applications received in 2017 by country of origin
• 23.3% originating in US, 20% in China, 19.8% in Japan• 63% from the top 3 countries, 77% from top 5 countries, 93% of filings from
top 15 countries
CN: +13.4% (double digit growth every year since 2003)SE: +7%JP: +6.6%
Asia: 49.1%Europe: 24.9%North America: 24.3%
Distribution of PCT Applicants in 2017
84.8%
8%5.4%
1.9%
BusinessesIndividualsUniversitiesGovernment
Top PCT Applicants 20171. Huawei Technologies—CN (4,024) 2. ZTE—CN (2,965)3. Intel—US (2,637)4. Mitsubishi Electric—JP (2,521)5. Qualcomm—US (2,163)6. LG Electronics—KR (1,945)7. BOE Technology Group—CN (1,818)8. Samsung—KR (1,757) 9. Sony—JP (1,735)10. Ericsson—SE (1,564)11. Microsoft—US (1,563)12. Hewlett-Packard—US (1,519)13. LE Holdings —CN (1,397)14. Bosch—DE (1,354)15. Panasonic—JP (1,280)16. Philips—NL (1,077)17. Siemens—DE (1,063)18. Shenzhen China Star Optoelectronics—CN (972)19. Fujifilm—JP (970)20. Denso—JP (968)
() of publishedPCT applications
Top 50 applicants:JP (15)US (13)CN (10)DE (5)KR (3)NL (2)FR (1)SE (1)
Top University PCT Applicants 20171. University of California (US)2. Massachusetts Institute of Technology (US)3. Harvard University (US)4. University of Texas (US)5. Johns Hopkins University (US)6. University of Florida (US)7. Seoul National University (KR)8. Hanyang University (KR)9. Stanford University (US)10. Korea Advanced Institute of Science and Technology (KR)11. Shenzhen University (CN)12. Columbia University (US)13. University of Tokyo (JP)14. University of Michigan (US)15. China University of Mining and Technology (CN)16. King Abdullah University of Science and Technology (SA)17. University of Pennsylvania (US)18. Korea University (KR)19. Tsinghua University (CN)20. Tohoku University (JP)
Top Government and Public Research Organization PCT Applicants 2017
1. Commissariat à L’Energie Atomique et aux Energies Alternatives (FR)2. Fraunhofer-Gesellschaft Zur Förderung Der Angewandten Forschung E. V. (DE)3. China Academy of Telecommunications Technology (CN)4. Institut National de la Santé et de la Recherche Médicale (FR)5. Centre National de la Recherche Scientifique (FR)6. Agency of Science, Technology and Research (SG)7. National Institute of Advanced Industrial Science and Technology (JP)8. Korean Electronics Technology Institute (KR)9. Shenzhen Institute of Advanced Technology (CN)10. Mayo Foundation for Medical Education and Research (US)11. Council of Scientific and Industrial Research (IN)12. Sloan-Kettering Institute for Cancer Research (US)13. Consejo Superior de Investigaciones Científicas (ES)14. Korea Institute of Machinery & Materials (KR)15. Commonwealth Scientific and Industrial Research Organisation (AU)16. Cedars-Sinai Medical Center (US)17. Nederlandse Organisatie Voor Toegepastnatuurwetenschappelijk Onderzoek
TNO (NL)18. Institute of Physical and Chemical Research (JP)
The appointed ISAs/IPEAs are the following 23 offices: AustraliaAustriaBrazilCanadaChile ChinaEgyptEuropean Patent OfficeFinlandIndiaIsraelJapanNordic Patent InstitutePhilippines (appointed at 2017 PCT Assembly)Republic of KoreaRussian FederationSingapore SpainSwedenTurkeyUkraineUnited States of AmericaVisegrad Patent Institute
PCT International Searching Authorities
Additional key numbers for 2017• The 243,500 PCT applications were filed by 52,355 applicants from 126 PCT
Contracting States in 85 receiving Offices, 96.2% being filed electronically
31.2% of the PCT applications filed in 2017 contained female inventors
• 231,400 ISRs issued by 22 ISAs, 84.1% within 3 months of the receipt of the search copy by the ISA
Top 5 ISAs: EPO (34.4%), JPO (19.9%), SIPO (19.1%), KIPO (10.9%), USPTO (9.1%)) established 93.4% of ISRs
• 223,600 PCT applications published by WIPO, 77.9% within 1 week of 18-month time limit
47.6% English, 19.4% Japanese, 15.7% Chinese, 7.4% German, 5.8%Korean, 2.7% French, 0.7% Spanish, 0.4% Russian, 0.2% Portuguese, 0.1% Arabic
• 615,400 PCT national phase entries (2016) representing 56.2% of worldwide non-resident filings
PCT Information and Training29 video segments about specific PCT topics on WIPO’s Youtubechannel and WIPO’s PCT webpagePCT Distance learning course content available in the 10 PCT publication languages, and a 2nd detailed PCT DL course under preparationPCT Webinars free updates on developments in PCT procedures, and PCT strategies—
previous webinars are archived and freely available upon request also for companies or law firms, for example, for focused
training on how to use ePCTVideoconference and audio possibilities also availableIn-person PCT Seminars and training sessions: see PCT seminar calendar (http://www.wipo.int/pct/en/seminar/seminar.pdf) Monthly Newsletter (http://www.wipo.int/pct/en/newslett/)Extensive information resources on PCT website (http://www.wipo.int/pct/en/)
If you’d like to discuss PCT training, contact us
Session 1: Best practices related to the
preparation and filing of PCT applications
What can go wrong? Correction procedures
WIPO-3Geneva17-18.09.2018
Reminder: Main PCT Time limitsBasic PCT time limits: At 12 months: filing a PCT application? At 16 months: furnishing the priority document? ISR + 2 months: amending the claims (Article 19)? At 30 months: national phase entry(ies)?
Other important PCT time limits: Within 16 months: possibility to anticipate fulfillment of
national requirements (declarations under Rule 4.17, etc.)? At 20 months: National phase entry in LU and TZ? At 22 months Supplementary International Search? Demand for International Preliminary Examination?
(Article 34 Amendments to the international application?)
WIPO-4Geneva17-18.09.2018
Overview
Getting ready to file: best practices and “filing tips”
Filing of an international application
Practical cases
Filing a Chapter II demand for preliminary examination
Correction procedures
WIPO-6Geneva17-18.09.2018
Getting ready to file: check list (1)Decision-making process (timely received/clear instructions?)
Avoid last-day and even more so last-minute filings
Have a plan B ready if something goes wrong
Make sure that you already have your accession number for your deposited biological material before filingEnsure that your filing software/certificate/User profile (when using ePCT, eOLF, CMS, etc.) is fully up-to-date and ready for filing (!∆ DO NOT file in ‘DEMO Mode’) ℮Know your RO(s) (filing method, payment method, additional features available: restoration, incorporation by reference, etc.)
WIPO-7Geneva17-18.09.2018
Getting ready to file: check list (2)Preparing the request form (PCT/RO/101) ℮:
Naming of the applicants:
Who are the applicant(s)?
Choice of first named applicant, where multiple applicants are named?
Naming of the inventors: Necessary?
Representation: what is your [preferred] ‘option’: agent (individual/patent firm), common representative or address for correspondence?
Exclusion of certain designations? Special situation of DE, JP or KR (!∆ applications filed with RO/DE, JP, and KR + priority claim of DE, JP or KR earlier application)
WIPO-8Geneva17-18.09.2018
Getting ready to file: check list (3)Preparing the request form (cont’d) ℮:
Priority claims: Filing date (<12months), serial number and country of filing Restoration of the priority right: Where? When?
How?
Priority document: identify your scenario
Choice of ISA (if available): Considerations: ‘PCT Direct’; Earlier search results; Language of search/translation ; Search fee
Signature: Who signs: Applicant? ALL applicants? Agent?
!∆ with powers of attorney -- Waiver applies?
WIPO-9Geneva17-18.09.2018
Getting ready to file: check list (4)
Preparing the request form (cont’d) ℮:
Correctly indicate your sequence listing in check list
Ideally, only file one copy of a sequence listing and in txt.format
Make use of PCT declarations?
Preparing the application body: good file management
‘real’ one intended for the PCT application
≠ a draft
≠ copy/paste of the priority claim content
WIPO-10Geneva17-18.09.2018
Which RO, filing language and ISA? (e.g. CH applicants)
ROs RO/CH RO/EP RO/IB(IGE-IPI)(OEB) (OMPI)
Filing language(s) English English, AnyFrench French, languageGerman German
ISAs EP EP EP
WIPO-11Geneva17-18.09.2018
Which RO, filing language and ISA?(e.g. DE, DK & TR applicants)
ROs Filing language(s) ISAs
RO/DE German EP
RO/DK Danish*, English, French EP, SE, XNGerman, Icelandic*, Norwegian* or Swedish*
RO/TR English, French German EP, TRor Turkish*
RO/EP English, French, German EP RO/IB Any language* EP, SE, TR, XN
* A translation is required for search and/or publication purposes
WIPO-12Geneva17-18.09.2018
Which RO, filing language and ISA? (e.g. UA, PL & BE applicants)
ROs Filing language(s) ISAsRO/UA English, Russian* EP, RU, UA
RO/PL English, French, EP, XVGerman, Polish*
RO/EP English, French, German EP
RO/IB Any language* EP, RU, UA, XV
* A translation is required for search and/or publication purposes
WIPO-14Geneva17-18.09.2018
What needs to be “in there” to get an international filing date (Article 11(1))
The application MUST contain at least:
an indication that it is intended as an international application (also called “petition”): i.e. the fact that you intend to file an international application
a request which has the effect of making all possible designations (Article 4 and Rules 3 and 4.9)
the name of the applicant (Rule 4.5)
a description (Rule 5)
a claim (Rule 6)
WIPO-15Geneva17-18.09.2018
What is not needed –at the time of filing–to get an international filing date (IFD)?
Payment of fees (!∆ lack of payment = application considered withdrawn)
Applicant’s signature ℮
Title of the invention ℮
AbstractDrawings (!∆ for missing drawings, see Article 14(2) and Rule 20.5 = later submitted drawings possible change of IFD)
Translation into language of search or publication
WIPO-16Geneva17-18.09.2018
Filing an international application: contentRequest (Article 3(2)) = form PCT/RO/101 ℮
Application body:
description (Article 3(2))
one or more claims (Article 3(2))
abstract (may be filed later without affecting the international filing date) (Articles 3(2) and 3(3))
drawings (where applicable) — (!∆ later submission may, subject to certain conditions, result in a later international filing date (Articles 3(2) and 14(2))
sequence listing part of description (where applicable) (Rule 5.2(a))
indications containing references to deposited microorganisms or other biological material (where applicable) (some designated Offices require that they be in the description or in the international application on the international filing date) (Rule 13bis)
E-filing specific issues ℮
WIPO-17Geneva17-18.09.2018
Where the priority of an earlier national (e.g. US), regional (e.g. EP) or international application is claimed, the applicant must provide a priority document for each corresponding earlier application (that is, a certified copy of the earlier application) –legal requirement--
Filing an international application: furnishing the priority document(s) (1)
WIPO-18Geneva17-18.09.2018
How? 3 modes of furnishing – check your context! –
by furnishing such document directly to the receiving Office or the International Bureau (Rule 17.1(a))
OR by requesting the receiving Office to prepare such
document and transmit it to the IB (Rule 17.1(b)), if the earlier application was filed with that Office [pattern: RO = OFF] à [“Option 1”]
OR by requesting the IB to obtain the priority document
from a digital library (Rule 17.1(b-bis)) (only for Offices participating in the Digital Access Service (DAS)) [pattern: OFF is a participating Office to DAS] [“Option 2”]
Filing an international application: furnishing the priority document(s) (2)
WIPO-19Geneva17-18.09.2018
Time limit for the furnishing of priority documents (Rule 17.1)
Direct submission by the applicant to the RO:
within 16 months from the priority date
Direct submission by the applicant to the IB:
before international publication
Request to the RO to prepare and transmit the priority document to the IB:
within 16 months from the priority date
Submission via DAS to IB:
The priority document must be made available to the IB via DAS and the request to the IB to retrieve the priority document must be made before international publication
WIPO-20Geneva17-18.09.2018
Retrieval of priority documents via DASPossibility to request the IB to retrieve a copy of the priority document of an earlier application, in electronic form, via DAS ℮The service is available for earlier national applications filed with AU, BR, CN, DK, EAPO, EE, ES, GB, FI, IN, JP, KR, MA, NL, NZ, SE and US and for earlier international applications filed with AU, BR, CN, DK, EAPO, ES, FI, IN, MA, NL, SE and RO/IB
The Office with which the earlier national application was filed is known as the Office of First Filing (OFF) or the Depositing Office
The Office that retrieves the document is known as the Office of Second Filing (OSF) or Accessing Office
WIPO-21Geneva17-18.09.2018
Furnishing the priority document(s): in practice (1)
Option 1: requesting the receiving Office to prepare such document and transmit it to the IB, where the OFF and the RO is the same Office (e.g. for the sake of this example the PCT application is deemed filed with RO/EP (see )
Option 2: the IB to obtain the priority document from a digital library (only for Offices participating in the Digital Access Service (DAS))
WIPO-22Geneva17-18.09.2018
Request for “DAS retrieval” upon filing in ePCT: in practice (2) ℮
Example of DAS retrieval upon filing in ePCT ℮: the IB to obtain the priority document from a digital library for both priority claims, a national (JP) and an international application (IB)), irrespective of the RO with which this IA was filed!
WIPO-23Geneva17-18.09.2018
DAS retrieval wrap-up: Is your international application “DAS friendly”?
ROs Priority claim(s)(s) DAS ?RO/DE US, CN, AU, JP, KR…
RO/DE DE [Option 1] (R.17.1(b))
RO/IB BR, CN, NZ, JP, KR… RO/IB TR, EP [applicant] (R.17.1(a))
RO/EP FI, US, ES, JP, IN… RO/EP RO [applicant] (R.17.1 (a))RO/EP EP [Option 1] (R.17.1(b))
WIPO-24Geneva17-18.09.2018
Filing an international application: filing declarations? ℮
Purpose: possibility to anticipate certain national phase requirements during the international phase (Rule 51bis.2)
Inclusion in request or subsequent filing is optional
Declarations relate to the following matters (Rule 4.17):
identity of the inventor
applicant’s entitlement to apply for and be granted a patent
applicant’s entitlement to claim priority of an earlier application
declaration as to inventorship (for the US designation only)
non-prejudicial disclosures or exceptions to lack of novelty
WIPO-25Geneva17-18.09.2018
Formal requirements
Declarations have to use standardized wording as prescribed in Sections 211 to 215 of the PCT Administrative Instructions (AIs)
Where a declaration has been furnished, in principle, no documents or evidence as to that matter may be required by the designated/elected Office upon national phase entry
unless that Office may reasonably doubt the veracity of the declaration; and/or
evidence concerning non-prejudicial disclosures or exceptions to lack of novelty may be required
WIPO-26Geneva17-18.09.2018
Declaration of inventorship (Rule 4.17(iv))(only for US designation)■ New standardized wording since 16 September 2012
(see Section 214 of the AIs)
■ ALL inventors need to be named in the same declaration
■ Declaration must be signed and dated by ALL inventors
■ Signatures may appear on different copies of the same complete declaration
■ Signature does not have to be an original (fax copy)
■ DO/US accepts a seal as signature when the international application is filed with receiving Offices which accept seals as signatures
WIPO-27Geneva17-18.09.2018
Addition/correction of declarations(Rule 26ter)
Applicants may correct or add any of the declarations filed under Rule 4.17
Time limit: until the expiration of 16 months from the priority date (or even later, provided that the declaration is received by the International Bureau before the technical preparations for international publication have been completed)
The receiving Office or International Bureau may invite the applicant to correct any declaration that is not worded as required or, in the case of the declaration of inventorship (Rule 4.17(iv)), is not signed as required (forms PCT/RO/156or PCT/IB/370)
WIPO-28Geneva17-18.09.2018
Publication of declarations
Declarations received within the applicable time limit will be mentioned on the front page of the published international application
The full text of the declarations will be published as part of the international application
WIPO-29Geneva17-18.09.2018
Declarations referred to under Rule 4.17: Additional issues National forms should not be used for declarations in the
international phase (for instance, a combined declaration of inventorship/ power of attorney) since they do not use the standardized wording
When a declaration is furnished after the international filing date, no further page fee would be required
If a defective declaration is not corrected during the international phase:
does not affect the processing of the declaration by the International Bureau
DOs/EOs may accept defective declaration
No provision for the withdrawal of declarations
WIPO-30Geneva17-18.09.2018
In principle, the request must be signed by ALL persons (legal entity or natural persons) indicated as “applicant” or “applicant and inventor”
a person named on the request as “inventor only” does not need to sign the request
if only ONE of the applicants signs, the lack of signature of the other applicants will not be considered a defect upon filing –will not prevent from filing-- ℮
Filing an international application: signature requirements (1)
WIPO-31Geneva17-18.09.2018
Signature of the international application (request) (Rules 4.15, 26.2bis(a)) (2)
If the request is only signed by an agent, a separate power of attorney signed by all the applicant(s) should be filed (either original individual power or copy of general power, no “domestic” power), unless waiver applies (Rules 90.4(d) and 90.5(c))
■ Any notice of withdrawal would have to be signed by or on behalf of ALL applicants to be considered effective (including “applicants and inventors”)
Signature by a person not named as applicant(FOR---ON BEHALF OF---AS AUTHORIZED SIGNATORY OF) depends on national law applied by receiving Office:
either an officer or employee of a legal entity (an officer or employee who does not have to be a patent attorney or patent agent)
or a legal representative, if the applicant is a natural person who is incapacitated
or a legal representative, if the applicant is a bankrupt company
WIPO-32Geneva17-18.09.2018
Agents (Rule 90): basic principlesWho can act as agent?
any person (attorney, patent agent, etc.) who has the right to practice before the RO can act as agent and automatically has the right to practice before the IB, the ISA and the IPEA (Article 49); (see Annex C of the RO where the international application is filed in the PCT Applicant’s Guide)
an agent who has the right to practice before the ISA and/or IPEA can be appointed specifically for the purposes of the procedure before that ISA or IPEA (Rule 90.1(b) and (c));
sub-agents may be appointed by agents (Rule 90.1(d))
What is a common agent? an agent appointed by ALL the applicants
WIPO-33Geneva17-18.09.2018
Common representatives (Rule 90)
Who can act as common representative?
one of the applicants, who is entitled to file an international application (i.e., who is a resident or national of a PCT Contracting State), may be appointed by all the other applicants, or
where neither a common agent nor a common representative has been appointed, the first named applicant in the request who is entitled to file an international application with the RO with which the international application was filed is automatically “deemed” to be common representative
WIPO-34Geneva17-18.09.2018
Agents and common representatives (Rule 90)
Any act by or in relation to a common agent or a common representative has the effect of an act by or in relation to all the applicants, except for:
a withdrawal made by a “deemed” common representative (Rules 90.3(c) and 90bis.5; and,
where an RO does not require that powers of attorney have to be submitted (Rules 90.4 and 90.5), a withdrawal made by an agent or common representative who has not submitted powers signed by all applicants (Rule 90bis.5)
WIPO-36Geneva17-18.09.2018
Problem 1: Small mistakes in the name of applicants (e.g. leaving out “Inc.” by accident) can be rather cumbersome to fix in national phase ? Could cause problem before some DOs (CA, EP, JP) Before PCT is filed, check bibliographic data to be used
thoroughly Prior to national phase entry, check (again) for accuracy
your files/records in the matter
Problem 2: Consider filing your PCT application outside your “home country” if running short vis-a-vis the priority periode.g. CN applicant missed priority period before RO/CN;
alternative ROs: RO/IB or RO/CA to ensure meeting the 12-month priority period
WIPO-37Geneva17-18.09.2018
Problem 3: “AIA changes” related [Article 11 defect]
Article 11(1)(i) requirement: Always include one applicant who has the right to file an international application under the PCT (e.g. AR, BO)
The RO shall accord as the international filing date the date of receipt of the international application providedthat the Office has found that (…) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the RO
Article 9 definition of a PCT Applicant: “Any resident or national of a (PCT) Contracting State may file an international application” : Careful with (sole) “applicant” company from VG, KY, AG, BO, etc.
Requests under PCT Rules 91 and 92bis are not the accurate legal remedies to an Article 11 defect
WIPO-38Geneva17-18.09.2018
Problem 4: “AIA changes” related
Nationality/residence of applicant(s) triggers the choice of ROs and of the competent ISA(s) (Rule 19.1):
e.g. [CA/CA] (sole) company applicant cannot select ISA/EP (nor RO/EP), despite “EP” inventors named in the request, even when filing with RO/IB (see PCT Applicant’s Guide, Annex B1/CA and Annex C/CA
Only possible where EP nationals/residents are named as applicant(s) [AND inventor(s)] (e.g. for the US) and the PCT application is not filed with RO/CA
Nationality/Residence of “inventor only” is irrelevant
WIPO-39Geneva17-18.09.2018
Problem 5: Representation and agent’s signature
Make sure the agent can represent the applicant before the receiving Office: “!∆ right to practice” before the receiving Office (e.g. in principle, a US agent does not have the right to practice before RO/EP, RO/CN, etc.)
Who can act as agent? Individual agent vs. patent attorneys ‘firm’, if the latter can be legally considered an ‘agent’ (e.g. UK Patent Law, EPC to some extent, see PCT Applicant’s Guide, Annex C/GB, Annex C/EP)
WIPO-40Geneva17-18.09.2018
Problem 6: Lack of funding
File your PCT application within the priority period even if financial support for filing is not yet secured: Payment of the PCT fees is not Article 11 critical –not required to get an international filing date–
Problem 7: Good file management: accurate match of office action + competent PCT Authority; an office action easy to file does not mean it was filed with the competent PCT Authority Withdrawals shall be effective upon receipt of a notice
addressed, at the choice of the applicant, to the RO, the IB or to the IPEA –where a Chapter II demand was filed;
Withdrawals timely filed to prevent publication from taking place BUT mistakenly filed with the non-competentPCT Authority, e.g. the ISA (after receipt of the ISR) are ineffective when received by the IB AFTER publication;
WIPO-41Geneva17-18.09.2018
Problem 8: Ensure the International Bureau (IB) receives 92bis request before the 30-month deadline
Although 92bis requests can be filed either at the RO or at the IB, some applicants prefer filing it through their local RO. It can happen that the RO transmits it too late for the IB to receive it before the 30-month deadline. The result is that the 92bis request will not be recorded, and the process will have to be done at the DO stage.
Best practice: Always submit your 92bis directly to the IB, using the ‘Action’ feature in ePCT –unless the IB has not yet received the Record Copy--
WIPO-42Geneva17-18.09.2018
Problem 9: Multiple 92bis request for the recording of (i) a new applicant is filed by (ii) a new agent of the new applicant (= TWO changes are requested to be recorded: ! make sure the complete scope of your request is stated; (clarify existing representation pattern if needed)
Submit updated list of pending international applications (<30M) Make sure the new agent can represent the applicant before the
receiving Office(s): “!∆ right to practice” where the PCT applications were originally filed (especially in the context of multiple international applications filed with multiple receiving Offices) e.g. new US agent cannot be recorded as such for applications
filed with RO/CN (irrespective of any PoA), etc. Good file management: check the current/latest bibliographic data of
the international applications concerned by the requested change(s) Power of Attorney (PoA): check accuracy of content: name capacity
and signature of signatory read clearly; ONE general PoA per receiving Office where the applications were filed
WIPO-44Geneva17-18.09.2018
What is a demand?
The demand is a request for International Preliminary Examination under Chapter II of the PCT
International Preliminary Examination is an optional procedure that provides for continued examination of the PCT application before an International Preliminary Examining Authority (IPEA)
Filing a demand constitutes the automatic “election” of all designated PCT Contracting States
WIPO-45Geneva17-18.09.2018
Why file a demand?Provides an opportunity during international preliminary examination to make amendments to the description, claims and drawings
Can submit arguments to address patentability objections raised by the ISA
International preliminary examination is the final opportunity to obtain a more positive patentability assessment during the international phase
Results in the establishment of an International Preliminary Report on Patentability (Chapter II)
Likelihood of more favorable treatment in the national phase on the basis of a positive patentability report
WIPO-46Geneva17-18.09.2018
Who is entitled to make a demand?(Article 31(2)(a) and Rule 54.2)
The applicant, or if there are two or more applicants, at least one of them,
who is a resident or national of a PCT Contracting State, and
whose international application has been filed with a receiving Office of or acting for a Contracting State (currently all States)
WIPO-47Geneva17-18.09.2018
The demand form
ePCT ℮
Electronic filing software provided by the IPEA
Printed demand form (PCT/IPEA/401 available in all 10 publication languages http://www.wipo.int/pct/en/forms/and filled in version PCT/IPEA/401)
Computer-generated demand (Rule 53.1(a) and Section 102(h) and (i))
Same requirements regarding layout and contents as for request form
WIPO-48Geneva17-18.09.2018
The demand for international preliminary examination: contents (Rule 53)
The demand must contain the following indications:
a petition
particulars enabling the international application to be identified (for example, the international application number)
the name of the applicant(s) under Chapter II
where appropriate, the name of the agent
the basis on which international preliminary examination should be carried out (a statement concerning amendments)
the language for the purposes of international preliminary examination
the signature of (at least one of) the applicant(s) or of the agent
WIPO-49Geneva17-18.09.2018
Signature of demand (Rule 53.8)
Only the persons indicated as applicants for the States elected in the demand need to sign the demand
If these applicants have appointed an agent or a common representative, that agent or common representative may sign
If there is no appointed agent or common representative, it is sufficient that the demand is signed by at least one of the applicants (see Rule 60.1(a-ter))
Note that some Authorities do not require that a separate power of attorney or a copy of a general power of attorney is furnished (Rules 90.4 and 90.5)
WIPO-50Geneva17-18.09.2018
Where to file the demand? (Rule 59) (1)Directly with the competent IPEA
specified by the RO
if more than one is specified by the RO, applicant has the choice
In making his choice, the applicant must take into account
the language(s) accepted by the IPEA
that some IPEA(s) accept only international applications which have been searched by certain ISAs (that is the case, for example, of IPEA/EP)
WIPO-51Geneva17-18.09.2018
Where to file the demand? (Rule 59) (2)
If the international application was filed with IB as RO, the competent IPEAs will be those which would have been competent if the international application had been filed with (any of) the national Office(s) which, on the basis of applicant's nationality or residence, could be a competent RO
Choice of IPEA should be indicated in the demand
WIPO-52Geneva17-18.09.2018
Which RO, which IPEA? (e.g. CH applicants)
ROs RO/CH RO/EP RO/IB(IGE-IPI)(OEB) (OMPI)
Filing language(s) English English, AnyFrench French, languageGerman German
IPEAs EP EP EP
WIPO-53Geneva17-18.09.2018
Which RO, which IPEA?(e.g. DE, DK & TR applicants)
ROs Filing language(s) IPEAs
RO/DE German EP
RO/DK Danish*, English, French EP, SE, XNGerman, Icelandic*, Norwegian* or Swedish*
RO/TR English, French German EP, TRor Turkish*
RO/EP English, French, German EP RO/IB Any language* EP, SE, TR, XN
* A translation can be required for examination purposes
WIPO-54Geneva17-18.09.2018
Which RO, which IPEA? (e.g. UA, PL & BE applicants)
ROs Filing language(s) IPEAsRO/UA English, Russian EP**, RU, UA
RO/PL English, French, EP, XVGerman, Polish*
RO/EP English, French, German EP
RO/IB Any language* EP**, RU, UA, XV
* A translation can be required for examination purposes** IPEA competent only if it has carried out the international search
WIPO-55Geneva17-18.09.2018
When should a demand be filed? (Rule 54bis.1(a)) (1)
At any time prior to the expiration of whichever of the following periods expires later:
3 months from the date of transmittal of the ISR and WO of the ISA
22 months from the priority date
In respect of designated Offices for which the 20-month time limit under Article 22(1) continues to apply, prior to the expiration of 19 months from the priority date, in order to delay national phase from 20 to 30 months from the priority date
Only applies to LU and TZ
WIPO-56Geneva17-18.09.2018
When should a demand be filed? (Rule 54bis.1(a)) (2)
Recommendation:
Upon receipt of the international search report and the written opinion of the ISA, evaluate the cited prior art documents and decide whether to proceed further, and if so, file the demand as soon as possible thereafter together with any amendments/arguments in light of the written opinion, thus allowing maximum time prior to issuance of international preliminary examination report (i.e., usually 28 months from the priority date)
WIPO-57Geneva17-18.09.2018
ePCT and the filing of a demand ℮ePCT with strong authentication can be used to prepare and file a demand
Fields are automatically populated
Automatic validations are done at the time of preparation
All accompanying documents may be attached, e.g., Article 19 amendments, Article 34 amendments, translations, etc.
The International Bureau automatically transmits the demand to the competent IPEA
Fees and all subsequent correspondence are to be submitted directly to the IPEA
WIPO-59Geneva17-18.09.2018
Defects which can be corrected withoutchanging the international filing date (1)
Office not competent because of the applicant’s nationality and residence (Rule 19.4(a)(i))
International application filed in a language not accepted by the receiving Office (Rule 19.4(a)(ii))
Errors in the indication of the applicant’s nationality and/or residence (Section 329 of the Administrative Instructions)
Non-admitted language for the request, abstract, text matter in drawings (Rule 26.3ter)
Incomplete, erroneous or missing priority claim (Rule 26bis)
WIPO-60Geneva17-18.09.2018
Defects which can be corrected without changing the international filing date (2)
Unpaid or not fully paid fees (Rule 16bis)
Missing signature in the request (Rule 4.15)
Incomplete, erroneous or missing declarations under Rule 4.17 (Rule 26ter)
Formal defects (Rules 11 and 26)
Missing title of the invention
Missing abstract
Obvious mistakes (Rule 91)
WIPO-61Geneva17-18.09.2018
Defects which may result in a laterinternational filing date (Rule 20.5)
missing sheets of
description
claims
drawings
WIPO-62Geneva17-18.09.2018
Defects under Chapter II (1)
Defects whose correction results in a later filing date of the demand
no eligible applicant for filing the demand (Rule 54.2)
international application not identifiable (Rule 60.1(b))
A demand filed after the expiration of 19 months from the priority date but within the applicable time limit under Rule 54bis.1(a), is valid but entry into the national phase will not be postponed until 30 months (Article 39(1)(a)) for LU and TZ
WIPO-63Geneva17-18.09.2018
Defects under Chapter II (2)
Defects which can be corrected without any adverse consequences:
demand not filed with a competent IPEA (Rule 59.3)
form of the demand (Rule 53.1)
indications relating to applicants and agents (Rules 53.4 and 53.5)
language of the demand (Rule 55.1)
lack of at least one signature (Rules 53.8 and 60.1(a-ter))
amendments under Article 34 referred to but not furnished (Rule 53.9(a)(i))
WIPO-64Geneva17-18.09.2018
Correction procedure (Rule 26.4)
Correction in the request (form PCT/RO/101):
may be stated in a letter
Correction of any element of the international application other than the request:
replacement sheet(s),
AND
letter drawing attention to the differences between the replaced and the replacement sheet must be submitted
WIPO-65Geneva17-18.09.2018
Chapter II correction procedure
Invitation by the IPEA to correct defects (Rule 60.1)
Invitation by the IPEA to pay missing fees (Rule 58bis)
Further possibilities:
request rectification of obvious mistakes before IPEA (Rule 91)
request review by and use opportunity to correct before the designated or elected Offices (Articles 25, 26 and 39(3))
WIPO-66Geneva17-18.09.2018
What is a replacement (substitute) sheet?(Rules 26.4, 46.5(a) and 66.8(a))
A sheet filed during the international phase which differs from the sheet as originally (or previously) filed because it contains:
correction(s) of formal defects (Rule 26)
rectification(s) of obvious mistakes (Rule 91)
amendment(s) of claims (Article 19)
amendment(s) of description, claims, drawings (Article 34)
change(s) in the indication(s) in the Request concerning applicants, inventors, agents (Rule 92bis)
WIPO-67Geneva17-18.09.2018
When and how to file a replacement sheet?
A replacement sheet must be submitted
where the correction/rectification/amendment is in any part of the international application other than the request, in all cases
where the correction/rectification/amendment is in the request, in cases where it is of such a nature that it cannot be communicated in a letter and transferred to the request without adversely affecting the clarity and direct reproducibility of that sheet of the request
It must be accompanied by a letter explaining the differences between the replaced sheet and the replacement sheet
Questions?
Thank you for your attention !
Christine BonvalletHead – PCT User Resources SectionPCT Legal and User Relations DivisionPCT Legal and International Affairs DepartmentT. +41 22 338 70 67 F. +41 22 910 00 [email protected]
The International Patent System
Session 2:International Search and Written Opinion of the ISA
Zhilong YUSenior Legal OfficerPCT Legal and User Support SectionPCT Legal and User Relations Division
WIPO HQ, GenevaSeptember 17 and 18, 2018
IS&PE 314.09.2018
The International Patent System
Objective of the international search
■ Each international application must be subject to international search
■ The objective of the international search is to discover relevant prior art (Article 15(2))
■ International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any)
IS&PE 414.09.2018
The International Patent System
The International Searching Authority
■ International search is carried out by the International Searching Authority (ISA)
■ International Searching Authorities are appointed by the Assembly
■ Rule 36 sets out the minimum requirements for International Searching Authorities
IS&PE 514.09.2018
The International Patent System
International Searching Authorities(currently 23 in total)
■ AT – Austria■ AU – Australia■ BR – Brazil■ CA – Canada■ CL – Chile ■ CN – China■ EG – Egypt ■ ES – Spain■ FI – Finland■ IL – Israel■ IN – India ■ JP – Japan
Receiving Office decides on which ISAs is/are competent
■ KR – Republic of Korea■ PH – Philippines (not yet operational)■ RU – Russian Federation■ SE – Sweden■ SG – Singapore■ TR – Turkey■ UA – Ukraine■ US – United States of America■ EP – European Patent Office■ XN – Nordic Patent Institute
(Denmark, Iceland, Norway)■ XV – Visegrad Patent Institute (VPI)
(Czechia, Hungary, Poland, Slovakia)
IS&PE 614.09.2018
The International Patent System
The international search procedure
■ The International Searching Authority will:
examine whether the claimed invention is searchable and not excluded
check unity of invention
search the claimed invention
establish the international search report (ISR) or declaration of non-establishment of ISR
establish the written opinion of the ISA
IS&PE 714.09.2018
The International Patent System
Cases where no search is required
■ Excluded subject matter (Rule 39), e.g.
scientific and mathematical theories
plant or animal varieties
mere presentations of information
■Where no meaningful search can be made
the claimed invention so unclear
required sequence listing not furnished
IS&PE 814.09.2018
The International Patent System
Consequences of non-search
■ If no claim is searched
Declaration of non-establishment of ISR (PCT/ISA/203) (Article 17(2)); this declaration will be published as part of the published international application
■ If only certain claims are not searched
search will continue to be done for the other claims
an ISR will be established, but with certain remarks to that effect
IS&PE 914.09.2018
The International Patent System
Relevant prior art (Rule 33.1) For the purposes of the international search, relevant prior
art shall consist of:
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 that the making available to the public occurred prior to the international filing date.
IS&PE 1014.09.2018
The International Patent System
Scope of international search
■ Article 15(4): The International Searching Authority …… shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations
■ PCT Minimum Documentation (Rule 34) patent literature non-patent literature
■ Any documentation at the disposal of the ISA
IS&PE 1114.09.2018
The International Patent System
Time limit for international search
■ After completion of international search, the ISA will establish, at the same time, ISR or declaration of non-establishment of ISR, and written opinion of the ISA (WO/ISA)Note: no search on part or all of the claims
■ Time limit for establishing ISR and WO/ISA 3 months from the receipt of the search copy, or 9 months from the priority date, whichever time limit expires later
IS&PE 1214.09.2018
The International Patent System
The international search report An ISR may contain:
verification of the title of invention and abstract
indications relating to any finding of lack of unity
indications relating to any finding that a meaningful search could not be carried out in respect of certain (but not all) claims
IPC (International Patent Classification) symbols
indications of the technical areas searched
a list of the relevant prior art documents
patent family annex
IS&PE 1314.09.2018
The International Patent System
Sample of International Search Report (part)
Symbols expressing views on whether the relevant claims are new or non-obvious, and others
Citations of documents with reference to specific locations
The claim numbersin the application towhich the document isrelevant
IS&PE 1414.09.2018
The International Patent System
Written opinion of the ISA
■ The WO/ISA serves as a non-binding opinion given to the applicant to indicate that
whether the claimed invention appears to be new, involve an inventive step (non-obvious), and be industrially applicable
whether certain other defects exist in the international application
Note: prior art for WO/ISA purposes, priority date vs. international filing date
IS&PE 1514.09.2018
The International Patent System
Content of the WO/ISA
■ The written opinion of the ISA (PCT/ISA/237) has the same format and content as the international preliminary examination report reasoned statement with regard to novelty,
inventive step and industrial applicability, and explanations thereof
comments on priority, unity of invention, explanations of non-establishment of opinion
remarks on other defects such as clarity and support
IS&PE 1614.09.2018
The International Patent System
Sample of Written Opinion of the ISA (part)
Patentability assessmentof claims
Reasoning supporting the assessment
IS&PE 1714.09.2018
The International Patent System
Possible response to WO/ISA The WO/ISA is made publicly available on
PATENTSCOPE in its original language after international publication of the application
No formal procedure for applicants to respond to the WO/ISA
Possibility to submit informal comments to the IB
they are made publicly available together with the written opinion in their original language
they are communicated to the DOs together with the IPRP (Chapter I) if and when it is sent
IS&PE 1814.09.2018
The International Patent System
International preliminary report on patentability (Chapter I) (Rule 44bis)
If applicant does not file a demand for international preliminary examination:
IB establishes the IPRP (Chapter I) on the basis of the written opinion of the ISA
If not in English, IB will translate it into English
IPRP (Chapter I) and its translation
are sent to designated Offices
are made publicly available on PATENTSCOPE at the expiry of 30 months from the priority date
IS&PE 1914.09.2018
The International Patent System
Use of the written opinion of the ISA in Chapter II procedure (Rule 66.1bis)
If applicant files a demand for international preliminary examination:
written opinion of the ISA usually serves as the first written opinion of the IPEA
informal comments by applicant on written opinion of ISA will not be sent to IPEA (Article 34 amendments/arguments only)
if an international preliminary examination report is established, any informal comments submitted to the IB will not be sent to DOs or EOs
IS&PE 2014.09.2018
The International Patent System
After receiving the ISR and WO/ISA, the applicant may
wait for national entry without any action
withdraw before publication
file Article 19 amendments and/or informal comments
file a demand, with any amendments and arguments
request for supplementary international search
Applicant’s options after international search
IS&PE 2214.09.2018
The International Patent System
Objective of International preliminary examination (Article 33)■ To formulate a preliminary and non-binding opinion on
the questions whether the claimed invention has:
novelty (Article 33(2))
inventive step (Article 33(3))
industrial applicability (Article 33(4))
■ It provides an opportunity for applicants to make amendments and to address patentability issues raised by the ISA
IS&PE 2314.09.2018
The International Patent System
Start of international preliminary examination (Rule 69.1)■ When the IPEA is in possession of:
the demand the international search report (or the declaration under
Article 17(2)(a)) and the written opinion of the ISA the preliminary examination and handling fees
provided that the IPEA shall not start the international preliminary examination before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly requests an earlier start [NB: this Rule is to be amended shortly]
■ If the demand contains a statement about amendments, when copies of these amendments are available or the applicable time limit has expired (see Rule 69.1(c), (d) and (e))
■ If international preliminary examination is to be carried out on the basis of a translation of the international application, when that translation is available (see Rule 55.2(c))
IS&PE 2414.09.2018
The International Patent System
Basis of International preliminary examination■ Article 19 and/or 34 amendments
■Only claims relating to the invention(s) searched by the ISA will be examined by the IPEA (Rule 66.1(e))
■ In the case of lack of unity of invention (Rule 68):
invite the applicant to restrict the claims or to pay additional fees (which can be paid under protest)
will only examine the “main invention” and those inventions for which additional fees are paid
IS&PE 2514.09.2018
The International Patent System
Non-establishment of opinion on patentability issues (Article 34(4))
■ Excluded subjected matter (Rule 67), e.g. scientific and mathematical theories plant or animal varieties mere presentations of information
■ Cases where no meaningful opinion can be formed claims so unclear claims so inadequately supported by description
■ If the above concerns only certain claims, only those claims may be excluded
IS&PE 2614.09.2018
The International Patent System
Mandatory top-up search (Rule 66.1ter)■ Aims at discovering relevant documents available for search
after the ISR was established
■ Exceptions:
Only in respect of the claims that are the subject of international preliminary examination
Where a search would serve no useful purpose, e.g. where the IPEA considers that the documents cited in the ISR are sufficient to demonstrate lack of novelty of the entire subject matter
IS&PE 2714.09.2018
The International Patent System
Prior art for IPE (Rule 64.1)
■What is considered prior art?
Everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) provided that such making available occurred prior to the relevant date
Note: non-written disclosure is not considered “prior art” but shall be specially mentioned in the report
IS&PE 2814.09.2018
The International Patent System
Written opinion of IPEA (Rules 66.2and 66.6)■ The written opinion of the ISA usually serves as the
first written opinion of the IPEA
■ IPEA may decide whether to issue a second written opinion or more
■ If a second written opinion is issued, the applicant may respond within the time limit fixed in that second written opinion
■ Possibility to request an interview with the examiner at the IPEA (Rule 66.6)
IS&PE 2914.09.2018
The International Patent System
Time limit for establishing the IPER
■ The international preliminary examination report (IPER, or the international preliminary report on patentability (Chapter II)) must be established within:
28 months from the priority date 6 months from the time provided under Rule 69.1 for
the start of the international preliminary examination 6 months from date of receipt by IPEA of translation
under Rule 55.2,
whichever expires last (Rule 69.2)
IS&PE 3014.09.2018
The International Patent System
Content of the IPER (1)
The IPER serves as a non-binding opinion given to the applicant to indicate that
whether the claimed invention appears to be new, involve an inventive step (non-obvious), and be industrially applicable
whether certain other defects exist in the international application
IS&PE 3114.09.2018
The International Patent System
Content of the IPER (2)
The IPER (PCT/IPEA/409) has the same format and content as the written opinion of the ISA reasoned statement with regard to novelty,
inventive step and industrial applicability, and explanations thereof
comments on priority, unity of invention, explanations of non-establishment of opinion
remarks on other defects such as clarity and support
It shall call attention to: non-written disclosures (Rules 64.2 and 70.9) and certain published documents (Rules 64.3 and 70.10)
IS&PE 3214.09.2018
The International Patent System
Annexes to the IPER (1)
■ The IPER may contain “annexes” (Rule 70.16):
replacement sheets containing amendments under Art. 19 or Art. 34 and any letter indicating the basis for the amendments
replacement sheets containing rectifications of obvious mistakes authorized under Rule 91 by the IPEA and accompanying letter
when referred to in the report, any sheet and letter concerning the rectification of an obvious mistake which has not been taken into account because it was not available in time (Rule 66.4bis)
IS&PE 3314.09.2018
The International Patent System
Annexes to the IPER (2)
■ It may contain “annexes” (Rule 70.16):
earlier amendments when later amendments are not used as a basis for the report because they are
considered to go beyond the disclosure in the international application or
not accompanied by a letter indicating the basis for the amendments
■ Not annexed to the report: any other correspondence or copies of amendments superseded by later amendments
IS&PE 3414.09.2018
The International Patent System
Use of the IPER
■ IPEA sends the report and its annexes to the applicant and to the IB (Rule 71.1)
■ If the report is not in English, IB prepares an English translation; the annexes are not translated by the IB (Article 36(3)(b))
■ IB forwards the report, together with its translation and its annexes (if any), to the elected Offices (Article 36(3)(a) and Rule 72.1)
IS&PE 3514.09.2018
The International Patent System
Reasons for delays in international preliminary examination (1)■ On the part of the applicant:
late payment of fee(s) late correction of defects in the demand incomplete statement, in the demand, concerning
amendments failure to attach amendments referred to in the statement late furnishing of any required translation of the international
application or of amendments late response to invitation to pay additional examination fees in
case of finding of lack of unity late response to written opinion failure to file replacement sheets containing amendments
IS&PE 3614.09.2018
The International Patent System
Reasons for delays in international preliminary examination (2)
■On the part of the ISA:
late issuance of international search report
■On the part of the IPEA:
finding of lack of unity
late issuance of written opinion
IS&PE 3814.09.2018
The International Patent System
Main Features■ An optional service for applicants, it is currently offered by: AT, EP, FI, RU, SE, SG, TR, UA,
XN and XV more Authorities are expected to offer SIS in the future
■ An applicant can request supplementary search by any Authority offering this service, except the one responsible for main international search
■ Each Authority determines the scope and fees for its supplementary search; limitations and conditions may apply (Rule 45bis.9(a))
■ Supplementary international search (SIS) covers only one invention – there is no option for paying additional fees
IS&PE 3914.09.2018
The International Patent System
Timing and Fees■ The supplementary search request must be filed with
the International Bureau within 22 months from the priority date
■ Fees must be paid in Swiss francs within 1 month of filing the request: supplementary search fee supplementary search handling fee
■ The Authority begins SIS on receipt of the SIS request and international search report (ISR) (at the latest at 22 months from the priority date, even if the main ISR has not yet been received)
■ The SIS Report is established by 28 months from the priority date
IS&PE 4014.09.2018
The International Patent System
SIS in the PCT System
(months)
File PCTapplication
120 30
International search report
& written opinion
16 18
Internationalpublication
(optional)File demand for
international preliminary examination
File localapplication
Enternationalphase
28
International preliminary report on
patentability
22
(optional)Request for
supplementary international
search
Supplementary international search report
IS&PE 4114.09.2018
The International Patent System
Scope of Search (1)■ Supplementary search is carried out on the claims as filed,
usually on the first claimed invention (Article 19 and 34 amendments are not taken into account)
■ The Authority is not required to search:
subject matter which it would not normally search in accordance with Article 17(2)
claims which have not been searched by the main ISA
any international application which is subject to a limitation set out in the Agreement between WIPO and the Authority defining the scope of their service (see www.wipo.int/pct/en/access/isa_ipea_agreements.html)
limitation of number of supplementary searchescarried out
limitation of number of claims searched
IS&PE 4214.09.2018
The International Patent System
Scope of Search (2)
■ The range of prior art to be searched is determined by the Authority
the search may be either a new search which takes into account all PCT minimum documentation as well as documents held in other languages by that Authority or
the search may be a complement to the main search, typically including a subset of language-related documentation held by that Authority
■ More information: PCT Applicant’s Guide, Annex SISA
IS&PE 4314.09.2018
The International Patent System
Further Processing of Report
■ The supplementary international search report is transmitted to the applicant and to the IB
■ The IB makes the report publicly available (if the international application has been published)
■ If the report is not in English, it will be translated into English by the IB
■ The IB sends the report and translations, where appropriate, to the IPEA and designated Offices
IS&PE 4514.09.2018
The International Patent System
Collaborative S&E Pilot
■ A pilot project among the IP5 Offices, for the establishment of ISR and WO/ISA under the PCT
■ Applicant must file a participation form with the RO (of the IP5 Offices) or RO/IB, together with the application
Before 31 Dec. 2018, application and participation form must be filed in English
Thereafter, may be filed in other language, but an English translation is required
■ Maximum 10 applications per applicant for the same ISA
IS&PE 4614.09.2018
The International Patent System
Collaborative S&E Pilot■ Procedure:
Main ISA establishes provisional ISR and WO
Peer ISAs make contributions on them
Main ISA finalizes the ISR and WO (only the final products count)
■ All reports and peer contributions will be made available on PATENTSCOPE
■ Limitations: 100 applications per ISA; possible maximum number per technical field
■ In the pilot, only the usual search fee payable to the main ISA is required
European Patent Office
PCT ISA checks CS&E criteria fulfilled, formalities examination, confirms acceptance
Collaborative Search & Examination (CS&E)
Process model
Product
CS&E International Search and
Written Opinion
ISA Examiner (Step 1)Carries out search, prepares provisional opinion and provisional search report
“Peer” examiners4 other IP5 Offices Contribution based on ISA provisional opinion and search report
Evaluation CS&E metrics will be monitored over the lifetime of the 500 applications
ISA Examiner (Step 2)Produces final International Search Report and Written Opinion
Earlierinformation
fromall IP5 offices
All officescontribute to
product quality
IS&PE 4914.09.2018
The International Patent System
The International Searching Authority (1)■ Checks unity of invention (Rules 13 and 40)
■ Checks title (Rule 37); checks abstract (Rule 38)
■ Searches claimed invention (Article 15(3), Rule 33.3)
■ Authorizes rectification of obvious mistakes if the mistake is:
in any part of the international application other than the request, (Rule 91.1(b)(ii)) or
in any paper submitted to that Authority (Rule 91.1(b)(iv))
IS&PE 5014.09.2018
The International Patent System
The International Searching Authority (2)
■ Establishes international search report (ISR) (Rules 42 and 43) and/or declaration that no international search report will be established (Article 17(2))
■ Establishes written opinion of the ISA (Rule 43bis): non-binding first opinion on novelty, inventive step (non-obviousness) and industrial applicability of claimed invention
IS&PE 5114.09.2018
The International Patent System
International Searching Authorities(currently 23 in total)
■ AT – Austria■ AU – Australia■ BR – Brazil■ CA – Canada■ CL – Chile ■ CN – China■ EG – Egypt ■ ES – Spain■ FI – Finland■ IL – Israel■ IN – India ■ JP – Japan
Receiving Office decides on which ISAs is/are competent
■ KR – Republic of Korea■ PH – Philippines (not yet operational)■ RU – Russian Federation■ SE – Sweden■ SG – Singapore■ TR – Turkey■ UA – Ukraine■ US – United States of America■ EP – European Patent Office■ XN – Nordic Patent Institute
(Denmark, Iceland, Norway)■ XV – Visegrad Patent Institute (VPI)
(Czechia, Hungary, Poland, Slovakia)
IS&PE 5214.09.2018
The International Patent System
Prior art for international search (Article 15(2) and Rule 33) 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 that the making available to the public occurred prior to the international filing date.
IS&PE 5314.09.2018
The International Patent System
Scope of international search
■ Fields to be covered (Rule 33.2)
pertinent to the invention
■ PCT Minimum Documentation (Rule 34)
patent literature
non-patent literature
■ Any documentation at the disposal of the ISA (Article 15(4))
IS&PE 5414.09.2018
The International Patent System
Products of international search
■ After completion of international search, the ISA will establish, at the same time,
ISR or declaration of non-establishment of ISR, and
written opinion of the ISA (WO/ISA)
Note: no search on part or all of the claims
■ Time limit for establishing ISR and WO/ISA
3 months from the receipt of the search copy, or
9 months from the priority date,
whichever time limit expires later
IS&PE 5514.09.2018
The International Patent System
International Search Report (ISR)(Rules 42 and 43) ISR contains:
verification of title of invention and abstract
indications relating to any finding of lack of unity
indications relating to any finding that a meaningful search could not be carried out in respect of certain (but not all) claims
IPC (International Patent Classification) symbols
indications of the technical areas searched
a list of the relevant prior art documents
patent family annex
IS&PE 5614.09.2018
The International Patent System
Sample of International Search Report (part)
Symbols expressing views on whether the relevant claims are new or non-obvious, and others
Citations of documents with reference to specific locations
The claim numbersin the application towhich the document isrelevant
IS&PE 5714.09.2018
The International Patent System
Cases where no international search report will be established (1)■ The application relates to a subject matter which the ISA is not
required to search, and in the particular case decides not to search (Article 17(2)(a)(i) and Rule 39.1)
■ The description, claims or drawings do not comply with the prescribed requirements to such an extent that a meaningful search cannot be carried out in respect of any of the claims (Article 17(2)(a)(ii))
■ The application contains the disclosure of a nucleotide and/or amino acid sequence, but:
no listing of that sequence is furnished,
the listing furnished does not comply with the Standard set out in Annex C of the Administrative Instructions or is not in electronic form (Rule 13ter.1(d)), or
the fee for late furnishing of the sequence listing has not been paid within the applicable time limit (Rule 13ter.1(d))
IS&PE 5814.09.2018
The International Patent System
Cases where no international search report will be established (2)
■Consequences:
the ISA will declare that no international search report has been established and that declaration will be published as part of the published international application (Rule 48.2(a)(v))
the application remains valid but the IPEA will not be obliged to carry out the international preliminary examination for lack of an international search report (Rule 66.1(e))
IS&PE 5914.09.2018
The International Patent System
Written opinion of the ISA
■ The WO/ISA serves as a non-binding opinion given to the applicant to indicate that
whether the claimed invention appears to be new, involve an inventive step (non-obvious), and be industrially applicable
whether certain other defects exist in the international application
Note: prior art for WO/ISA purposes, priority date vs. international filing date
IS&PE 6014.09.2018
The International Patent System
Content of the WO/ISA
■ The written opinion of the ISA (PCT/ISA/237) has the same format and content as the written opinion of the IPEA and the international preliminary examination report
reasoned statement with regard to novelty, inventive step and industrial applicability, and explanations thereof
comments on priority, unity of invention, explanations of non-establishment of opinion
remarks on other defects such as clarity and support
IS&PE 6114.09.2018
The International Patent System
Sample of Written Opinion of the ISA (part)
Patentability assessmentof claims
Reasoning supporting the assessment
IS&PE 6214.09.2018
The International Patent System
Written opinion of the ISA (Rule 43bis) The written opinion is made publicly available on
PATENTSCOPE in its original language as of the date of publication of the international application
No formal procedure for applicants to respond to written opinion of the ISA
Possibility to submit informal comments to the International Bureau
They are made publicly available together with the written opinion in their original language
They are communicated to the DOs together with the IPRP (Chapter I) if and when it is sent
Note: The IPRP Chapter I and its translation are established at 30 months from the priority date
IS&PE 6314.09.2018
The International Patent System
International preliminary report on patentability (IPRP) (Chapter I of the PCT) (Rule 44bis) If applicant does not file a demand for international preliminary
examination:
IB establishes the IPRP (Chapter I) on the basis of the written opinion of the ISA
IPRP (Chapter I) and its translation
are sent to designated Offices
are made publicly available on PATENTSCOPE at the expiry of 30 months from the priority date
IS&PE 6414.09.2018
The International Patent System
Use of the written opinion of the ISA for the purposes of the Chapter II procedure (Rule 66.1bis)If applicant files a demand for international preliminary
examination:
written opinion of the ISA usually serves as the first written opinion of the IPEA
informal comments by applicant on written opinion of ISA will not be sent to IPEA (Article 34 amendments/arguments only)
if an international preliminary examination report is established, any informal comments submitted to the IB will not be sent to DOs or EOs
IS&PE 6514.09.2018
The International Patent System
After receiving the ISR and WO/ISA, the applicant may
wait for national entry without any action
withdraw before publication
file Article 19 amendments and/or informal comments
file a demand, with any amendments and arguments
request for supplementary international search
Applicant’s options after international search
IS&PE 6714.09.2018
The International Patent System
Objective of International preliminary examination (Article 33)■ To formulate a preliminary and non-binding opinion on
the questions whether the claimed invention has:
novelty (Article 33(2))
inventive step (Article 33(3))
industrial applicability (Article 33(4))
■ It provides an opportunity for applicants to make amendments and to address patentability issues raised by the ISA
IS&PE 6814.09.2018
The International Patent System
Start of international preliminary examination (Rule 69.1)■ When the IPEA is in possession of:
the demand the international search report (or the declaration under
Article 17(2)(a)) and the written opinion of the ISA the preliminary examination and handling fees
provided that the IPEA shall not start the international preliminary examination before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly requests an earlier start [NB: this Rule is to be amended shortly]
■ If the demand contains a statement about amendments, when copies of these amendments are available or the applicable time limit has expired (see Rule 69.1(c), (d) and (e))
■ If international preliminary examination is to be carried out on the basis of a translation of the international application, when that translation is available (see Rule 55.2(c))
IS&PE 6914.09.2018
The International Patent System
Basis of International preliminary examination■ Article 19 and/or 34 amendments
■Only claims relating to the invention(s) searched by the ISA will be examined by the IPEA (Rule 66.1(e))
■ In the case of lack of unity of invention (Rule 68):
invite the applicant to restrict the claims or to pay additional fees (which can be paid under protest)
will only examine the “main invention” and those inventions for which additional fees are paid
IS&PE 7014.09.2018
The International Patent System
Non-establishment of opinion on patentability issues (Article 34(4))
■ Excluded subjected matter (Rule 67), e.g. scientific and mathematical theories plant or animal varieties mere presentations of information
■ Cases where no meaningful opinion can be formed claims so unclear claims so inadequately supported by description
■ If the above concerns only certain claims, only those claims may be excluded
IS&PE 7114.09.2018
The International Patent System
Mandatory top-up search (Rule 66.1ter)■ Aims at discovering relevant documents available for search
after the ISR was established
■ Exceptions:
Only in respect of the claims that are the subject of international preliminary examination
Where a search would serve no useful purpose, e.g. where the IPEA considers that the documents cited in the ISR are sufficient to demonstrate lack of novelty of the entire subject matter
IS&PE 7214.09.2018
The International Patent System
Prior art for IPE (Rule 64.1)
■What is considered prior art?
Everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) provided that such making available occurred prior to the relevant date
Note: non-written disclosure is not considered “prior art” but shall be specially mentioned in the report
IS&PE 7314.09.2018
The International Patent System
Written opinion of IPEA (Rules 66.2and 66.6)■ The written opinion of the ISA usually serves as the
first written opinion of the IPEA
■ IPEA may decide whether to issue a second written opinion or more
■ If a second written opinion is issued, the applicant may respond within the time limit fixed in that second written opinion
■ Possibility to request an interview with the examiner at the IPEA (Rule 66.6)
IS&PE 7414.09.2018
The International Patent System
Time limit for establishing the IPER
■ The international preliminary examination report (IPER, or the international preliminary report on patentability (Chapter II)) must be established within:
28 months from the priority date 6 months from the time provided under Rule 69.1 for
the start of the international preliminary examination 6 months from date of receipt by IPEA of translation
under Rule 55.2,
whichever expires last (Rule 69.2)
IS&PE 7514.09.2018
The International Patent System
Content of the IPER (1)
The IPER serves as a non-binding opinion given to the applicant to indicate that
whether the claimed invention appears to be new, involve an inventive step (non-obvious), and be industrially applicable
whether certain other defects exist in the international application
IS&PE 7614.09.2018
The International Patent System
Content of the IPER (2)
The IPER (PCT/IPEA/409) has the same format and content as the written opinion of the ISA reasoned statement with regard to novelty,
inventive step and industrial applicability, and explanations thereof
comments on priority, unity of invention, explanations of non-establishment of opinion
remarks on other defects such as clarity and support
It shall call attention to: non-written disclosures (Rules 64.2 and 70.9) and certain published documents (Rules 64.3 and 70.10)
IS&PE 7714.09.2018
The International Patent System
Annexes to the IPER (1)
■ The IPER may contain “annexes” (Rule 70.16):
replacement sheets containing amendments under Art. 19 or Art. 34 and any letter indicating the basis for the amendments
replacement sheets containing rectifications of obvious mistakes authorized under Rule 91 by the IPEA and accompanying letter
when referred to in the report, any sheet and letter concerning the rectification of an obvious mistake which has not been taken into account because it was not available in time (Rule 66.4bis)
IS&PE 7814.09.2018
The International Patent System
Annexes to the IPER (2)
■ It may contain “annexes” (Rule 70.16):
earlier amendments when later amendments are not used as a basis for the report because they are
considered to go beyond the disclosure in the international application or
not accompanied by a letter indicating the basis for the amendments
■ Not annexed to the report: any other correspondence or copies of amendments superseded by later amendments
IS&PE 7914.09.2018
The International Patent System
Use of the IPER
■ IPEA sends the report and its annexes to the applicant and to the IB (Rule 71.1)
■ If the report is not in English, IB prepares an English translation; the annexes are not translated by the IB (Article 36(3)(b))
■ IB forwards the report, together with its translation and its annexes (if any), to the elected Offices (Article 36(3)(a) and Rule 72.1)
IS&PE 8014.09.2018
The International Patent System
Reasons for delays in international preliminary examination (1)■ On the part of the applicant:
late payment of fee(s) late correction of defects in the demand incomplete statement, in the demand, concerning
amendments failure to attach amendments referred to in the statement late furnishing of any required translation of the international
application or of amendments late response to invitation to pay additional examination fees in
case of finding of lack of unity late response to written opinion failure to file replacement sheets containing amendments
IS&PE 8114.09.2018
The International Patent System
Reasons for delays in international preliminary examination (2)
■On the part of the ISA:
late issuance of international search report
■On the part of the IPEA:
finding of lack of unity
late issuance of written opinion
IS&PE 8314.09.2018
The International Patent System
Main Features■ An optional service for applicants, it is currently offered by: AT, EP, FI, RU, SE, SG, TR, UA,
XN and XV more Authorities are expected to offer SIS in the future
■ An applicant can request supplementary search by any Authority offering this service, except the one responsible for main international search
■ Each Authority determines the scope and fees for its supplementary search; limitations and conditions may apply (Rule 45bis.9(a))
■ Supplementary international search (SIS) covers only one invention – there is no option for paying additional fees
IS&PE 8414.09.2018
The International Patent System
Timing and Fees■ The supplementary search request must be filed with
the International Bureau within 22 months from the priority date
■ Fees must be paid in Swiss francs within 1 month of filing the request: supplementary search fee supplementary search handling fee
■ The Authority begins SIS on receipt of the SIS request and international search report (ISR) (at the latest at 22 months from the priority date, even if the main ISR has not yet been received)
■ The SIS Report is established by 28 months from the priority date
IS&PE 8514.09.2018
The International Patent System
SIS in the PCT System
(months)
File PCTapplication
120 30
International search report
& written opinion
16 18
Internationalpublication
(optional)File demand for
international preliminary examination
File localapplication
Enternationalphase
28
International preliminary report on
patentability
22
(optional)Request for
supplementary international
search
Supplementary international search report
IS&PE 8614.09.2018
The International Patent System
Scope of Search (1)■ Supplementary search is carried out on the claims as filed,
usually on the first claimed invention (Article 19 and 34 amendments are not taken into account)
■ The Authority is not required to search:
subject matter which it would not normally search in accordance with Article 17(2)
claims which have not been searched by the main ISA
any international application which is subject to a limitation set out in the Agreement between WIPO and the Authority defining the scope of their service (see www.wipo.int/pct/en/access/isa_ipea_agreements.html)
limitation of number of supplementary searchescarried out
limitation of number of claims searched
IS&PE 8714.09.2018
The International Patent System
Scope of Search (2)
■ The range of prior art to be searched is determined by the Authority
the search may be either a new search which takes into account all PCT minimum documentation as well as documents held in other languages by that Authority or
the search may be a complement to the main search, typically including a subset of language-related documentation held by that Authority
■ More information: PCT Applicant’s Guide, Annex SISA
IS&PE 8814.09.2018
The International Patent System
Further Processing of Report
■ The supplementary international search report is transmitted to the applicant and to the IB
■ The IB makes the report publicly available (if the international application has been published)
■ If the report is not in English, it will be translated into English by the IB
■ The IB sends the report and translations, where appropriate, to the IPEA and designated Offices
IS&PE 9014.09.2018
The International Patent System
Collaborative S&E Pilot
■ A pilot project among the IP5 Offices, for the establishment of ISR and WO/ISA under the PCT
■ Applicant must file a participation form with the RO (of the IP5 Offices) or RO/IB, together with the application
Before 31 Dec. 2018, application and participation form must be filed in English
Thereafter, may be filed in other language, but an English translation is required
■ Maximum 10 applications per applicant for the same ISA
IS&PE 9114.09.2018
The International Patent System
Collaborative S&E Pilot
■ Procedure: Main ISA establishes provisional ISR and WOPeer ISAs make contributions on themMain ISA finalizes the ISR and WO (only the final
products count)■ All reports and peer contributions will be made available on
PATENTSCOPE■ Limitations: 100 applications per ISA; possible maximum
number per technical field■ In the pilot, only the usual search fee payable to the main
ISA is required
European Patent Office
PCT ISA checks CS&E criteria fulfilled, formalities examination, confirms acceptance
Collaborative Search & Examination (CS&E)
Process model
Product
CS&E International Search and
Written Opinion
ISA Examiner (Step 1)Carries out search, prepares provisional opinion and provisional search report
“Peer” examiners4 other IP5 Offices Contribution based on ISA provisional opinion and search report
Evaluation CS&E metrics will be monitored over the lifetime of the 500 applications
ISA Examiner (Step 2)Produces final International Search Report and Written Opinion
Earlierinformation
fromall IP5 offices
All officescontribute to
product quality
The International Patent System
Session 3:Legal considerations when e-filing PCT applications and subsequent documents
WIPO HQ, GenevaSeptember 17 and 18, 2018
Silke WeissLegal OfficerPCT Legal and User Relations Division
GE presentation (SW)-214.09.2018
The International Patent System
Relevance of this topic■ Legal provisions and requirements of the PCT apply to all PCT
applications, irrespective of how they are submitted, by paper or electronically
■ Some special provisions for electronic filing and submission exist (Part 7 of the Administrative Instructions)
■ Electronic systems assist applicants to comply with the legal provisions of the PCT, they don’t grant any further rights
E.g. signature of the request form required by an authorized person
■ However, new challenges arise in the electronic world as most legal provisions originate from a paper-only paradigm
E.g. how to sign the request form when filing and submitting documents electronically
GE presentation (SW)-414.09.2018
The International Patent System
Electronic Filing Methods (1) ■ PCT-SAFE (software)
■ ePCT-Filing (web-based)
■ National/regional software or web-based filing systems
■Offices notify the IB of the of the electronic form they accept (Section 703(a) of the Administrative Instructions)
Section 703(e): Any receiving Office may refuse to receive an international application submitted to it in electronic form if the application does not comply with paragraph (b), or may decide to receive the application
GE presentation (SW)-514.09.2018
The International Patent System
Electronic Filing Methods (2) ■ Where do I find out which filing methods an office accepts?
Look up ‘Office Profiles’ page in the ePCT system
Applicant’s Guide
GE presentation (SW)-614.09.2018
The International Patent System
Filing Recommendations (1)■ Ensure that your filing software is always up-to-date (ePCT is
always up-to-date)
■ Give all of your electronic files clear and distinctive names
■ Double-check that the correct files have been attached (correct and complete)
■ Check for possible conversion errors
ePCT allows view of pages as they will be published
before the application is filed
generated by the actual systems used for publications
particularly important for drawings with colour or greyscale
GE presentation (SW)-714.09.2018
The International Patent System
Filing Recommendations (2)■ Pre-conversion files
What are pre-conversion files? Many international applications which are filed in electronic form are
initially prepared in a particular electronic document format (for example, MS-Word) and are subsequently converted, for the purposes of filing, into another electronic document format (for example, PDF or XML)
in the process of converting from one document format to another, the data may accidentally be modified or altered
Correction procedure Section 706 of the Administrative Instructions provides for the submission
of a copy of the application in the “pre-conversion” format at the time of filing the PCT application
the applicant has the opportunity to correct the international application should data have been accidentally modified or altered in the conversion process
Submission of pre-conversion files: Accepted by all ROs, except US and Israel ePCT: submit as ‘accompanying items’ Not taken into account for page fee calculation
GE presentation (SW)-814.09.2018
The International Patent System
Filing Recommendations (3)■ National security provisions
Some PCT Contracting States have national legislation which restricts the filing of international applications with other Offices for reasons of national security where:
Applicants or inventors are nationals or residents of the relevant State; and/or
the invention was made in the relevant State
compliance with any national security prescriptions applicable under national laws is the applicant's responsibility
ePCT offers a link to national security guidelines for those Offices that made this information available to the IB
http://www.wipo.int/pct/en/texts/nat_sec.html
GE presentation (SW)-914.09.2018
The International Patent System
Drawings (1)■ Rule 11.13(a): “Drawings shall be executed in durable, black, sufficiently dense and
dark, uniformly thick and well-defined, lines and strokes without colorings.”
■ Color or greyscale content not permitted in PCT applications
■ ePCT “service”
ePCT will automatically detect color or greyscale content and warn the applicant that the IB will convert the color/greyscale content to black and white for publication
The applicant can preview in ePCT what the rendered black and white drawings will look like when they are eventually published
If color or greyscale is used, the front page of the published PCT application will contain a notice that the application as filed contained color or greyscale content, and the original color or greyscale content will be available on PATENTSCOPE
Designated Offices are not obliged to take the color or greyscale content into account, and may rely on the PCT application as published in black and white
GE presentation (SW)-1014.09.2018
The International Patent System
Drawings (2) – Example of submitted drawings
GE presentation (SW)-1114.09.2018
The International Patent System
Drawings (3) – Example of published drawings
GE presentation (SW)-1214.09.2018
The International Patent System
Electronic signature requirements (1)■ Signature requirements:
Rule 4.15: the request must be signed by all applicants
Rule 26.2bis(a): it is sufficient if one applicant signs
corporate applicant: an authorized officer/employee
Rule 90.3(a): any act by the agent shall have the effect of an act by the applicant
Subsequent actions, Rule 92.1:
Any paper submitted by the applicant … shall, if not itself in the form of a letter, be accompanied by a letter identifying the international application to which it relates. The letter shall be signed by the applicant.
■ Electronic requirements (Section 703(c) of the Administrative Instructions):
An international application filed in electronic form shall be signed by the applicant
Each Office notifies the IB which types of signature it accepts
ePCT filters only the accepted signature types for each Office
GE presentation (SW)-1314.09.2018
The International Patent System
Electronic signature requirements (2)
■ ePCT access rights holders (eOwner or eEditor) are different from authorized signatories (applicant or agent)
eOwner/eEditor: Right to access and manage a PCT application in ePCT
■ Applicant or agent may not necessarily be an eOwner or eEditor
■ Applicant or agent signatures are required for ePCT-Filing and other PCT transactions, e.g., Rule 92bis changes, filing of Chapter II demand, Article 19 amendments, withdrawals
GE presentation (SW)-1414.09.2018
The International Patent System
Electronic signature requirements (3)■ Types of signatures
Text-string: /Silke Weiss/
Uploading an Image file (jpg,tif):
It is also possible to indicate that the signature of an authorized signatory appears in an attached document
‘External signature’
allows someone without ePCT access to apply their signature to a document prepared using ePCT (e.g., where the attorney does not have access to ePCT but needs to approve and sign a document prepared by a paralegal who uses ePCT)
GE presentation (SW)-1514.09.2018
The International Patent System
Electronic signature requirements (4)
GE presentation (SW)-1614.09.2018
The International Patent System
Advantages of ePCT (1)
■ Automatic checks and validations
ePCT-filing: real-time validation of data against the electronic processing system of the International Bureau
■ Fee reduction
International filing fee: 1,330 CHF
Fee reduction:
Electronic form, request not in character coded format: 100 CHF
Electronic form, request in character coded format: 200 CHF
Fully electronically: 300 CHF
GE presentation (SW)-1714.09.2018
The International Patent System
Advantages of ePCT (2) ■ Sequence listings forming part of the application
Rules 5.2 and 49.5(a-bis) Section 208 and Annex C of the Administrative Instructions Where the international application contains disclosure of one or more
nucleotide and/or amino acid sequences, the description must contain a sequence listing complying with the standard provided for in Annex C of the Administrative Instructions (“PCT Sequence Listing Standard”)
■ Fees No page fees are payable for sequence listings filed in ST.25 text format
as part of an international application filed in electronic form ePCT provides for sequence listings in text format only, not in image
format Full page fees are payable for all pages of a sequence listing filed in
image format as part of an international application in electronic form Full page fees are payable for sequence listings filed on paper
■ PatentIn Software (available free of charge from several offices)
GE presentation (SW)-1814.09.2018
The International Patent System
Mistakes to avoid■ Be sure to file in PROD, not DEMO mode■ Know your RO
Beware of time/date at the recipient office ePCT displays the date and time at the recipient office
selected Filing methods, additional features Pre-conversion files
■ Don’t forget to “submit” a saved draft (saved ≠ submitted)■ Down-time
Consider alternative filing methods■ Careful choice of RO (e.g. restoration of the right of priority,
incorporation by reference) ePCT-Filing will prompt you to change the receiving Office to
RO/IB if the selected RO does not permit certain procedures
GE presentation (SW)-2014.09.2018
The International Patent System
Recording of Changes (Rule 92bis) (1)■ What can be recorded under Rule 92bis?
Change of name
Change of address
Change of nationality
Adding/deleting an inventor
Change of applicant (assignment, addition, deletion)
Change of agent
■ What CANNOT be recorded under that Rule?
License agreements
Security measures, etc.
GE presentation (SW)-2114.09.2018
The International Patent System
Recording of Changes (Rule 92bis) (2) ■ The request must be made in writing [no email communications]
■ May be filed with the IB [or the RO]
Recommendation: use the ‘Action’ in ePCT to submit to IB
■ Generally no evidence of the change is required during the international phase (the designated Offices may, however, require that evidence (for example, assignment) be submitted once the national phase has been entered)
■ The IB will notify the applicant (using Form PCT/IB/306) that the requested change has been recorded
■ The request must reach the IB before the expiration of 30 month from priority date
■ The IB will record a change affecting multiple pending international applications with a single written request
GE presentation (SW)-2214.09.2018
The International Patent System
■ If the applicant wants a particular change to be taken into account for the international publication of the IA, the request for the recording of that change must reach the IB before the completion of technical preparations for international publication (normally, 15 calendar days before the actual date of publication)
■ If the request for recording of a change reaches the IB too late to be reflected in the international publication, it will nevertheless be acted upon and notified to the DOs/EOS
■ If the request reaches the IB AFTER the expiration of 30 months, the change will not be recorded and the applicant will have to further proceed with such request before each DO/EO concerned
Recording of Changes (Rule 92bis) (3)
GE presentation (SW)-2314.09.2018
The International Patent System
Recording of Changes (Rule 92bis) (4)■ Where the request for recording the change is made by a
person not yet named in the request (“the new applicant”) without the written consent of the (“old”) applicant, the IB will require a copy of an assignment or other documentary evidence supporting the change in person be filed with the request for the change
■ Where such request is made by an agent of the new applicant (e.g. new agent very likely) , a power of attorneysigned by the new applicant must be furnished at the same time
■ Where such request is made by the “agent of record”, a power of attorney signed by the new applicant appointing this agent should be submitted, unless the waiver applies
GE presentation (SW)-2414.09.2018
The International Patent System
■Best practice: Ensure the International Bureau (IB) receives 92bis request before the 30-month deadline
Although 92bis requests can be filed either at the RO or at the IB, some applicants prefer filing it through their local RO. It can happen that the RO transmits it too late for the IB to receive it before the 30-month deadline. The result is that the 92bis request will not be recorded, and the process will have to be done at the DO stage.
Best practice: Always submit your 92bis directly to the IB, using the ‘Action’ feature in ePCT –unless the IB has not yet received the Record Copy--
GE presentation (SW)-2514.09.2018
The International Patent System
■ Best practice: Multiple 92bis request for the recording of (i) a new applicant is filed by (ii) a new agent of the new applicant (= TWO changes are requested to be recorded: ! make sure the complete scope of your request is stated; (clarify existing representation pattern if needed)
Submit updated list of pending international applications (<30M) Make sure the new agent can represent the applicant before the
receiving Office(s): “!∆ right to practice” where the PCT applications were originally filed (especially in the context of multiple international applications filed with multiple receiving Offices) e.g. new US agent cannot be recorded as such for applications
filed with RO/CN (irrespective of any PoA), etc. Good file management: check the current/latest bibliographic data of
the international applications concerned by the requested change(s) Power of Attorney (PoA): check accuracy of content: name capacity
and signature of signatory read clearly; ONE general PoA per receiving Office where the applications were filed
GE presentation (SW)-2614.09.2018
The International Patent System
Withdrawals (Rule 90bis) (1)■ What? international applicationdesignations (also for certain kinds of protection)priority claimdemand
■ When?before the expiration of 30 months from the priority date
■ How?by a notice of withdrawal signed by all applicants, or on
their behalf by the appointed agent or common representative
Recommendation: use the ‘Action’ in ePCT
GE presentation (SW)-2714.09.2018
The International Patent System
Withdrawals (Rule 90bis) (2)
■ Effect of the withdrawal before completion of the technical preparations for international publication
Prevents publication of the PCT application
■ Effect of the withdrawal of (earliest) priority claim
time limits which have not expired are re-computed on the basis of the revised priority date
GE presentation (SW)-2814.09.2018
The International Patent System
Article 19 Amendments ■ One opportunity to amend the claims only after receipt of the
international search report and written opinion of the ISA■ Amended claims must not go beyond disclosure of the
international application as filed■ Normally must be filed within two months from the date of
transmittal of the international search report and written opinion of the ISA (Rule 46.1)
■ Complete set of new claims, accompanied by a letter identifying the changes and indicating their basis in the application as filed
■ Filed directly with the International Bureau Recommendation: use the ‘Action’ in ePCT
■ Published as part of the international application at 18 months, together with the claims as originally filed
GE presentation (SW)-2914.09.2018
The International Patent System
Filing a demand (1)■ What is a demand?Request for International Preliminary Examination under
Chapter II of the PCT IPE is an optional procedure that provides for continued
examination of the PCT application before an IPEA■ Why file a demand?Opportunity to make amendments to the description,
claims and drawingsOpportunities to submit arguments to address patentability
objections raised by the ISA■ How to file a demand?ePCT Recommendation: use the ‘Action’ in ePCT
Electronic filing software provided by the IPEA
GE presentation (SW)-3014.09.2018
The International Patent System
Filing a demand (2)■ Where to file a demand?
Legally: directly with the competent IPEA
Recommendation: use the ‘Action’ in ePCT
Direct with IPEAs that allow for it
Otherwise the International Bureau automatically transmits the demand to the competent IPEAs
GE presentation (SW)-3114.09.2018
The International Patent System
Filing a demand using ePCT■ Advantages of using ePCT “Action”:Fields are automatically populatedAutomatic validations are done at the time of preparationAll accompanying documents may be attached, e.g.,
Article 19 amendments, Article 34 amendments, translations, etc.
Routed directly to IPEAs that allow for itThe International Bureau automatically transmits the
demand to the competent IPEA■ Payment of FeesFees and all subsequent correspondence are to be
submitted directly to the IPEA (via ePCT for some IPEAs)
GE presentation (SW)-3214.09.2018
The International Patent System
Advantages of ePCT
■ Automatic checks and validations
the user benefits from pre-filled bibliographic data and automated validations to avoid errors
time limit checks
Data and documents submitted through “Actions” are directly imported for processing with no need for retyping (reduces potential transcription errors)
GE presentation (SW)-3314.09.2018
The International Patent System
Keep in mind (1)■ ePCT helps ensuring that “Actions” are submitted to the correct office by
limiting the choice to the competent offices
■ Beware of recipient office when submitting documents (RO, ISA)
E.g. NZ applicant sent search related documents to RO, not ISA
E.g. EPO applicant sent withdrawal to ISA, not RO
ePCT guides you from making such errors – the types of documents for upload are dynamic depending on the recipient selected
■ Down-time
Alternative filing methods
82quater
Offices will excuse a delay in meeting any time limit (except 12 month priority period and time limit for national phase entry), if it is proven to the Office’s satisfaction that the time limit could not be met due to general unavailability of electronic communication services or other similar reason
GE presentation (SW)-3414.09.2018
The International Patent System
Keep in mind (2)
■ Fax transmissions no longer recommended
■ Documents via email: not accepted
■ ePCT Message
For informal communication “only”
Not to be used for 92bis requests etc. (use “upload” or “action” instead, preferably the relevant “action”)
The International Patent System
Session 5:Review of particular safeguard provisions
Matthias REISCHLE-PARKDeputy DirectorPCT Legal and User Support SectionPCT Legal and User Relations Division
WIPO HQ, GenevaSeptember 17 and 18, 2018
Session 5 Safeguard Provisions-313.09.2018
The International Patent System
Case No. 1:Trademarked names of chemical compounds were included in the description of a PCT application. Applicant would like them to be removed.
Case No. 2:92bis request from a new agent requesting to record his client as a new applicant; request is accompanied by an assignment document containing all financial arrangements made in the context of the transfer of rights; the agent would like to replace the submitted assignment document with a redacted version.
Session 5 Safeguard Provisions-413.09.2018
The International Patent System
Omission of sensitive information from publication (Article 21 and Rule 48)■ Omission of certain information from international publication (Rule 48.2)
Reasoned request by the applicant to the IB Accompanied by replacement sheets and letter drawing attention
to the differences between the replaced and the replacement sheet
Time limit for a request under Rule 48.2: Completion of technical preparations for international publication
Information qualifies for omission from publication, if it does not obviously serve the purpose of informing the public
about the international application, publication of such information would clearly prejudice the
personal or economic interests of any person, and there is no prevailing public interest to have access to
that information
Session 5 Safeguard Provisions-513.09.2018
The International Patent System
Omission of sensitive information from public access (Rule 94.1)■ Requirements to omit certain information from public file access
under Rule 94.1(e)
Reasoned request by the applicant to the IB
Accompanied by replacement sheets and letter drawing attention to the differences between the replaced and the replacement sheet (where applicable)
Time limit for a request under Rule 94.1: any time
Information qualifies for omission from public file access, if
it does not obviously serve the purpose of informing the public about the international application,
public access to such information would clearly prejudice the personal or economic interests of any person, and
there is no prevailing public interest to have access to that information
Session 5 Safeguard Provisions-713.09.2018
The International Patent System
Case No. 3:Unsuccessful fax transmission of an international application at 5 min to midnight.
Case No. 4:International application was filed late due to a docketing error by a paralegal.
Session 5 Safeguard Provisions-813.09.2018
The International Patent System
Restoration of the right of priority -Competent Authorities
■RO during the international phase (Rule 26bis.3)
■DO during the national phase(Rule 49ter.2)
Session 5 Safeguard Provisions-913.09.2018
The International Patent System
Restoration of the right of priorityApplicable criteria■Applicable Rules: 26bis.3(a) and 49ter.2(a)
■Two possible criteria for restoration:
failure to file the application within the priority period occurred in spite of due care required by the circumstances having been taken
failure to file the application within the priority period was unintentional
■All Offices must apply at least one of these criteria and may apply both; designated Offices may also apply a more favorable criterion in accordance with their national law
Session 5 Safeguard Provisions-1013.09.2018
The International Patent System
Restoration by RO (Rule 26bis.3)■Conditions:
request to restore must be filed with the RO
time limit: within a period of 2 months from the date of the expiration of the priority period
filing of statement of reasons for failure to comply with the time limit
statement should preferably be accompanied by a declaration or other evidence to support such statement
where applicable, payment of the required fee
Session 5 Safeguard Provisions-1113.09.2018
The International Patent System
Effects of refusal to restore by RO(Rule 26bis.3)
Any priority claim to an earlier application filed less than 14 months before the international filing date
will not be declared void even if priority is not restored by the RO (Rule 26bis.2(c)(iii))
will serve as a basis to calculate time limits during the international phase
The validity of such a priority claim in the national phase is not assured
Session 5 Safeguard Provisions-1213.09.2018
The International Patent System
Effects of restoration in the national phase (Rule 49ter.1)■ Effect of restoration by RO in the national phase:
RO restoration based on the “due care” criterion is effective in all DOs
RO restoration based on the “unintentional” criterion is effective in those DOs which apply that criterion (or a more lenient one)
RO restoration is not conclusively binding on DOs: limited review by DOs is possible
RO refusal to restore is not binding on DOs
■ For declarations of incompatibility with the national law (reservations), see the WIPO website at: www.wipo.int/pct/en/texts/reservations/res_incomp.html
Session 5 Safeguard Provisions-1313.09.2018
The International Patent System
Reservations made by OfficesThe following Offices have notified the International Bureau of theincompatibility of Rule 26bis.3(a) to (i), Rule 49ter.1(a) to (d) and/or Rule 49ter.2(a) to (g) with their national/regional law:
Incompatibility as RO (Rule 26bis.3(j)):BR, CO, CU, CZ, DE, DZ, GR, ID, IN, IT, KR, NO, PH
Incompatibility of the effect of decision of RO on DO (Rule 49ter.1(g)):BR, CA, CN, CO, CU, CZ, DE, DZ, ID, IN, KR, LT, MX, NO, PH
Incompatibility as DO (Rule 49ter.2(h)):BR, CA, CN, CO, CU, CZ, DE, DZ, ID, IN, KR, MX, NO, PHSee the Table of “PCT Reservations, Declarations, Notifications and Incompatibilities” www.wipo.int/pct/en/texts/reservations/res_incomp.html
Session 5 Safeguard Provisions-1513.09.2018
The International Patent System
Case No. 5:At the time of filing the PCT application, the last page of drawings was accidently not transmitted to the RO.
Case No. 6:The paralegal attached the wrong set of claims at the time of filing the PCT application. The set of claims attached belonged to a different application which had already previously been filed.
Session 5 Safeguard Provisions-1613.09.2018
The International Patent System
Missing elements and parts of the international application (Rule 20) (1)
■Objective: Enable inclusion of accidentally omitted elements or parts that are contained in a priority application without affecting the international filing date
element = all of the description or all of the claims
part = part of the description, part of claims or part or all of pages of drawings
Session 5 Safeguard Provisions-1713.09.2018
The International Patent System
Missing elements and parts of the international application (Rule 20) (2)■ Conditions:
priority must have been claimed on the original filing date (Rule 4.18)
priority application contains the element or part (Rule 20.6(b))
request contains statement of (conditional) incorporation by reference (Rule 4.18)
timely confirmation of incorporation by reference (Rules 20.6 and 20.7)
■ Competent Authority: RO
Session 5 Safeguard Provisions-1813.09.2018
The International Patent System
Confirmation of incorporation by reference (Rules 20.6 and 20.7) (1)■ Time limit: two months from filing or from invitation to
correct (Rule 20.7)
■ Documents to be filed (Rule 20.6):
notice of confirmation
missing sheets
copy of the earlier application as filed unless the priority document already submitted
translation if not in the language of the international application
indication as to where in the priority document (and translation) the missing parts are contained
Session 5 Safeguard Provisions-1913.09.2018
The International Patent System
Confirmation of incorporation by reference (Rules 20.6 and 20.7) (2)
■ If not all requirements for incorporation by reference are fulfilled
(for example, if a missing element or part is not entirely contained in the earlier application):
the international application is assigned a later filing date (date of receipt of missing element or part),
applicant may request that missing part be disregarded (Rule 20.5(e))
Session 5 Safeguard Provisions-2013.09.2018
The International Patent System
Invitation by RO to correct defect under Article 11(1) (Rule 20.3)
Where the entire description or all claims are missing, RO invites the applicant to either:
furnish a correction under Article 11(2) and the international application is accorded a later filing date or,
confirm under Rule 20.6(a) that the element is incorporated by reference under Rule 4.18 and the international filing date is maintained
Session 5 Safeguard Provisions-2113.09.2018
The International Patent System
Effect of incorporation by reference in the national phase (Rule 82ter.1(b))
■ DOs may, to a limited extent, review the decision allowing the incorporation by reference
■ Declarations of incompatibility with the national law (reservations) were made by a number of ROs and DOsSee WIPO website at:www.wipo.int/pct/en/texts/reservations/res_incomp.html
Session 5 Safeguard Provisions-2213.09.2018
The International Patent System
Declarations of incompatibility with the national lawThe following Offices have notified the International Bureau of the incompatibility of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 with its national/regional law:
Incompatibility as RO (Rule 20.8(a)):
CU, CZ, DE, ID, IT, KR, MX
Incompatibility as DO (Rule 20.8(b)):
CN, CU, CZ, DE, ID, KR, MX, TR
Session 5 Safeguard Provisions-2413.09.2018
The International Patent System
Case No. 7:At the time of filing, it was overlooked that the description of an international application contained a paragraph in French in an otherwise English application.
Session 5 Safeguard Provisions-2513.09.2018
The International Patent System
Rectification of obvious mistakes (Rule 91) (1)■ No rectification shall be made except with the express
authorization:
of the receiving Office if the mistake is in the request,
of the International Searching Authority if the mistake is in any part of the international application other than the request or in any paper submitted to that Authority,
of the International Preliminary Examining Authority if the mistake is in any part of the international application other than the request or in any paper submitted to that Authority,
of the International Bureau if the mistake is any paper, other than the international application or amendments or corrections to that application, submitted to the International Bureau
Session 5 Safeguard Provisions-2613.09.2018
The International Patent System
Rectification of obvious mistakes (Rule 91) (2)
■ Time limit: 26 months from the priority date (Rule 91.2)
■ Clarification as to mistakes which are not rectifiable under Rule 91:
missing sheets or elements
mistake in the abstract
mistake in Article 19 amendments
mistake in the priority claims causing a change in the priority date
Session 5 Safeguard Provisions-2713.09.2018
The International Patent System
Rectification of obvious mistakes (3)
■ DO may disregard a rectification “if it finds that it would not have authorized the rectification if it had been the competent authority”, but must give the applicant an opportunity to make observations (Rule 91.3(f))
■ Authorized request for rectification:
if this is received after technical preparations for publication have been completed, the IB will publish a statement reflecting the rectifications, any replacement sheets and the request for rectification together with the republished front page (Rule 48.2(i))
The International Patent System
Session 6:Best practices for successfulnational phase entry
Matthias REISCHLE-PARKDeputy DirectorPCT Legal and User Support SectionPCT Legal and User Relations Division
WIPO HQ, GenevaSeptember 17 and 18, 2018
Session 6 National Phase-213.09.2018
The International Patent System
Decisions to be taken by the applicant■Whether to proceed with or drop the international application ?
■When at the end of 30 months (in some cases 31 months or
more) under Chapter I ?* under Chapter II ?
early entry ?■Where (choice limited to designated/elected Offices) which national Offices which regional Offices
* LU and TZ continue to apply a 20-month time limit
Session 6 National Phase-313.09.2018
The International Patent System
Prepare for national phase entry■ Take relevant decisions as early as possible
■ Double-check names of applicants to allow for last-minute 92bisrequests
■ Provide local agent with all relevant information (via ePCT?)
■ Instruct local agent how to further prosecute the case
National phase amendments?
How to argue the case
Continue to provide local agent with information
Session 6 National Phase-413.09.2018
The International Patent System
Use of PCT-PPH?■ Some benefits:Reduces duplication of effort via patent office work-sharing
Increases grant rate
Reduces pendency and legal uncertainty
Streamlines prosecution
Reduces cost (by reducing number of office actions)
■ Procedural requirements
Session 6 National Phase-513.09.2018
The International Patent System
Time limit issues
■ The time limit to enter national phase applies irrespective of possible delays in the international phase
■Where national phase entry time limit has been missed:
Does Rule 49.6 apply?
If yes, which criterion is applicable?
Which time limit applies?
Cases, where Rule 49.6 does not apply
Session 6 National Phase-613.09.2018
The International Patent System
DO/EOs to which Rule 49.6 does not apply Notifications of incompatibility with respective national law
were filed in accordance with Rule 49.6(f):
CA Canada LV LatviaCN China MX MexicoDE Germany NZ New ZealandIN India PH PhilippinesKR Republic of Korea PL Poland
The national law applicable by some of these Offices may nevertheless provide for other forms of protection against loss of rights - for further details, see for each DO/EO, the relevant National Chapter in the PCT Applicant’s Guide, National Phase
Session 6 National Phase-713.09.2018
The International Patent System
Translation issues
■Most Offices require translation of international application as filed and as amended
■ Translations must be accurate
■ Text matter in drawings
■ Defects in translations?
Session 6 National Phase-813.09.2018
The International Patent System
Amendments under national law■ PCT guarantees opportunity to amend application in
the national phase
■ Details of amendment practice are governed by national law
■ Adapt claim drafting to national preferences
■ Reduce number of claims to avoid/reduce claims fees
Special cases: CN, DE, IN
■ Time limit
Session 6 National Phase-913.09.2018
The International Patent System
Special national requirements
■ Time limit under Rule 51bis.3
■ Declarations should now pay off
■ Translation of the priority document (Rule 51bis.1(e))
Session 6 National Phase-1013.09.2018
The International Patent System
Is your agent requiring more than he/she should?■ Legitimate cases:
Original priority document where document was not furnished in time during international phase
Proof or evidence concerning recorded changes under Rule 92bis
By pass route in the US
■ Not so legitimate cases:
Does request come from the Office?
Clarify with International Bureau
Session 7:Recent and Future Developments
Thomas HENNINGERLegal Information OfficerPCT User Resources SectionPCT Legal and User Relations Division
WIPO HQ, GenevaSeptember 17 and 18, 2018
Recent & Futuredev-217.09.2018
Overview
Amendments to PCT Regulations as from 1 July 2018
PCT Working Group 2018 results
Recent Developments
Future Developments
Recent & Futuredev-417.09.2018
PCT Rule Changes
Amendment to the Schedule of Fees Clarification that the 90% fee reduction is intended only for
persons filing PCT applications in their own right and not those filing PCT applications on behalf of a person or entity which is not eligible for the fee reduction (e.g. the director or employee of a company where the application is made for the benefit of the company)
Amendment to PCT Rules 4.1(b)(ii) and 41.2(b) Correction of references regarding provisions which entered into
force on 1 July 2017 relating to the transmittal of earlier search and/or classification results
Recent & Futuredev-517.09.2018
Reminder of previous Rule ChangesOmission of certain (sensitive) information from international publication (Rule 48) or public file access (Rule 94); or from forwarding documents from RO to IB (Rule 26bis.3) 2016Extension of Rule 82quarter (force majeure) to “general unavailability of electronic communication services” 2016Transmittal of earlier search and/or classification results by ROs to ISAs (Rules 12bis, 23bis and 41) 2017Obligation for designated Offices to timely send national phase entry and related data to the IB (Rules 86 and 95) 2017Extension of the deadline for requesting supplementary international search from 19 to 22 months - 2017
Recent & Futuredev-717.09.2018
PCT WG 2018 OutcomesAgreed amendment to Rule 69.1(a), allowing IPEA to begin IPE when in possession of demand, fees, ISR and WO (effectively reversing current default, unless applicant requests postponement)IB to draft new amendment proposals for 2019 WG on “erroneously filed elements and parts”IB to consult member States on issues relating to proposed fee reduction for universities and prepare document for 2019 WG on options and implementation issuesIB invited to work with Offices and users on requirements and proposals for systems to assist national phase entryNoted: IB-proposed priorities and directions for future development of PCT document on PCT applications linked to UN Security Council sanctions, and
concluded that IB’s existing arrangements for handling such cases are appropriate and fully consistent with PCT
preparations for launch of 3rd pilot on collaborative search and examination between IP5 offices
Recent & Futuredev-917.09.2018
Recent Developments
New ISAs/IPEAs
PCT Highlights
Licensing availability
Third Party Observations
PATENTSCOPE / WIPO Pearl
PCT Direct
PCT and PPH
Arbitration and Mediation Center Fee Reductions
Collaborative Search & Examination Pilot
Recent & Futuredev-1017.09.2018
New ISAs/IPEAs
Twenty three (23) Offices now hold the status as ISA/IPEA
The State Intellectual Property Service of Ukraine (SIPSU) started operations as an ISA/IPEA on 5 February 2016
The Visegrad Patent Institute started operations as ISA/IPEA on 1 July 2016
Turkish Patent and Trademark Office started operations as from 8 March 2017
The Intellectual Property Office of the Philippines has been appointed as an ISA/IPEA (2017) (not yet operational)
Recent & Futuredev-1117.09.2018
State Intellectual Property Service of Ukraine
Languages accepted for international search English, French, German, Russian, Ukrainian
Search fee: 325 CHF (300 Euro / 328 USD)Offers three different search options as SISA/UA PCT Minimum Documentation Russian and former USSR European and North American
Does not waive the requirement of a power of attorney be submitted with the application
Recent & Futuredev-1217.09.2018
Visegrad Patent Institute (VPI)
Languages accepted for international search: Czech, English, Hungarian, Polish and Slovak
Search Fee: 2,059 CHF (1,775 Euro / 2,095 USD))Offers two different search options as SISA/XV Full search CZ, HU, PO, SK documentation
Waives the requirement that a power of attorney be submitted with the application
Recent & Futuredev-1317.09.2018
Turkish Patent and Trademark Institut(TURKPATENT)
Languages accepted for international search: English and Turkish
Search Fee: 2,059 CHF (1,775 Euro / 2,095 USD))Offers two different search options as SISA/TR Full search TR documentation
Waives the requirement that a power of attorney be submitted with the application
Recent & Futuredev-1417.09.2018
PCT Highlights
High-level summary of recent and future developments in the PCT, with hyperlinks to more detailed information, databases, videos, etc.
Targeted, in particular, at managers and attorneys
Possibility to subscribe to the PCT Highlights mailing list for update notifications
http://www.wipo.int/pct/en/highlights/index.html
Recent & Futuredev-1517.09.2018
Licensing availability (1)Applicants interested in concluding license agreements in relation to their international application may request the International Bureau to make this information available in PATENTSCOPE:
How? Applicants should submit a “Licensing Availability Request” to the IB using an ePCT “Action”
Alternatively, Form PCT/IB/382 may be used
When? At the time of filing or within 30 months from the priority date
Free of charge
Applicants can file multiple licensing requests or update previously submitted ones (within 30 months from the priority date)
Recent & Futuredev-1617.09.2018
Licensing availability (2)
Licensing indications will be made publicly available after international publication of the application
The licensing indications will be visible on PATENTSCOPE under the “Bibliographic data” tab with a link to the submitted licensing request itself
International applications containing licensing information can be searched for in PATENTSCOPE
The licensing indication displayed under the “Bibliographic data” tab may be revoked by the applicant at any time, that is, also after 30 months from the priority date
Recent & Futuredev-1817.09.2018
Third Party Observations - Main FeaturesAllows third parties to submit prior art observations relevant to novelty and inventive step
Web-based system using ePCT or web-forms in PATENTSCOPE
Free-of-charge
Submissions possible until the expiration of 28 months from the priority date
Applicants may submit comments in response until the expiration of 30 months from the priority date
Anonymous submission of third party observations possible
Third-party supplied documents will not be available via PATENTSCOPE, but will be made available to International Authorities and national Offices
Recent & Futuredev-1917.09.2018
Third Party Observations – Role of the IB
Checks for spam
Notifies the applicant of submission of observations
Makes observations available in PATENTSCOPE
Sends to International Authorities and designated Offices observations, cited documents, and applicant responses
Available since July 2012
Recent & Futuredev-2117.09.2018
PATENTSCOPEInterface available in 10 languages (plus mobile version)
“Documents” tab includes the new section “Search and Examination-Related Documents”
Information on national phase entry for more than 55 countries
Access to more than 50 searchable national and regional patent collections – inclduing Global Dossier information
New secure access to PATENTSCOPE via https
WIPO Translate
translation tool based on neural machine translation technology that enables it to convert highly technical patent documents into a second language in a style and syntax that closely mirrors common usage
Cross-Lingual Expansion
allows the search of a term/phrase and its variants in severallanguages by entering the term(s) in one language, the system willsuggest variants and translate the term(s) allowing the search of patent documents in other languages
Recent & Futuredev-3117.09.2018
WIPO PearlMultilingual terminology portal which gives access to scientific and technical terms derived from patent documents (over 160,000 patent terms)
Available in all ten PCT languages
Helps to promote accurate and consistent use of terms across different languages and makes it easier to search and share scientific and technical knowledge
All content validated with reliability scores
Integrated with PATENTSCOPE
Further details can be found at:www.wipo.int/wipopearl/search/home.html
Recent & Futuredev-3417.09.2018
“PCT Direct” (1)New service offered by:
EPO since 1 November 2014
Israel Patent Office since 1 April 2015
During the PCT procedure, applicants can address patentability issues raised in the search opinion established for the priority application by the same office
Aims at improving the efficiency and quality of the procedure before the ISA
Further details can be found on the EPO website: http://www.epo.org/law-practice/legal-texts/official-journal/2014/09/a89.html
Further details can be found on the Israel Patent Office website: http://index.justice.gov.il/En/units/ILPO/Departments/PCT/News/Pages/PCTDirect.aspx
Recent & Futuredev-3517.09.2018
(months)
File PCTapplication
120 30
International search report
& written opinion
16
(optional)File
demand forInternational
preliminaryexamination
File localapplication
Enternationalphase
22
Possibility of amendments and
reaction according to national law
Possibility of informal comments
0-12
Receivelocal
searchopinion
(same Office as ISA (EP/IL))
Possibility of comments on local search opinion in
view of adding value to ISR and
WO
“PCT Direct Letter”
Possibility of amendments and
arguments to IPEA
Recent & Futuredev-3617.09.2018
“PCT Direct” (2)Requirements: the informal comments are filed together with the PCT
application with any RO if ISA/EP is chosenwith RO/IL if ISA/IL;
EPO or Israel Patent Office is selected as ISA; the PCT application claims priority of an earlier application
searched by the EPO (European first filing or national first filing)1
Israel Patent OfficeForm: the informal comments are filed in form of a “PCT Direct Letter”
in a single document in PDF format and the words “PCT Direct/informal comments” have been indicated under “Other” in Box IX of the PCT request form (Form PCT/RO/101)
• 1 The EPO performs national searches for France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino, Lithuania, Latvia and Monaco
Recent & Futuredev-3717.09.2018
“PCT Direct” (3)Informal comments: They are arguments regarding the patentability of the claims of the
PCT application
May include explanations regarding any modifications to the application documents, in particular to the claims, in comparison with the earlier application (e.g. marked-up copy)
Aim at overcoming objections raised in the search opinion established for the priority application
Do not form part of the PCT application, but are made publicly available on PATENTSCOPE
Recent & Futuredev-3817.09.2018
Patent Prosecution Highway (PPH) and PCTAccelerated examination in the national phase based on a positive work product of an International Authority (written opinion of the ISA or the IPEA, IPRP (Chapter I or II))Conditions: At least one claim has been determined by the ISA or the IPEA
to meet the PCT criteria of novelty, inventive step and industrial applicability; and
ALL the claims must sufficiently correspond to the claims deemed to meet the PCT criteria (they are of the same or similar scope or they are of narrower scope than the claims in the PCT application)
Recent & Futuredev-3917.09.2018
Patent Prosecution Highway (PPH) and PCTGlobal PPH complements existing bilateral PPH agreements Introduction of Global PPH Pilot in January 2014 Single set of qualifying requirements that simplifies the existing
PPH network so that it is more accessible for users Global PPH includes PCT-PPH
PCT Website:www.wipo.int/pct/en/filing/pct_pph.html
Information on the PPH Portal: www.jpo.go.jp/ppph-portal/index.htm
Information on procedures and forms can be found on the websites of the participating Offices
The IB requests feedback on experience with PCT-PPH at [email protected]
Recent & Futuredev-4117.09.2018
Arbitration and Mediation Center (AMC)Independent and impartial body that offers alternative dispute resolution options for the resolution of commercial disputes between private parties (time and cost efficient alternatives to litigation)
Provides mediation, arbitration and expert determinationservices for IP and other commercial disputes
25% lifetime reduction on AMC’s registration and administration fees where at least one party to the dispute has been named as an applicant or inventor in a published PCT application (no relationship to the dispute is required)
Fee calculatorhttp://www.wipo.int/amc/en/calculator/adr.jsp
Recent & Futuredev-4217.09.2018
Collaborative search & examination3rd pilot on a collaborative search & examination
IP5 Offices (EPO, USPTO, JPO, SIPO, KIPO)
100 files per Offices over the first two years
Recent & Futuredev-4417.09.2018
Future developmentsLegal and institutional developments Incorporation by reference: “erroneously filed elements and parts” Safeguard in case of IT outages Better linkage of national and international filings as well as national
phase (support of «Cooperation» element)Technical (IT) environment Content of PCT Published Application (transmittal of CPC
classification) Implementation of WIPO Standard ST.26 for Sequence listings Electronic systems to assist national phase entry Further improvement of IT environment and “key data exchange”Financial issues and fees Discussion about fee reduction for universities Netting pilot Quality Quality metrics – PCT minimum documentation Pilot on collaborative search and examination Coordination of patent examiner training