Transcript WIPO Webinar: 2009 PCT Update and Developments Matthias REISCHLE Deputy Director and Head PCT Legal Affairs Section PCT Legal Division.

WIPO Webinar:
2009 PCT Update and Developments
Matthias REISCHLE
Deputy Director and Head
PCT Legal Affairs Section
PCT Legal Division
2009 PCT Update and Developments
• 2008 PCT Statistics
• PCT Contracting States
• SIS (Supplementary International Search) effective January
1, 2009
• July 1, 2009 Rule changes
• July 1, 2009 Administrative Instruction/practice changes on
sequence listings
• Things we are working on
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
2
PCT Statistics
180000
160000
140000
120000
100000
80000
60000
40000
20000
0
78
80
82
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
84
86
88
90
92
94
96
98
00
02
04
06
08
3
International Applications Received in 2008
by Country of Origin
60'000
50'000
40'000
30'000
20'000
10'000
0
US
JP
DE
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
KR
FR
CN
GB
NL
SE
CH
CA
IT
FI
AU
IL
4
139 PCT States
=PCT
Albania
Algeria
Angola
Antigua and Barbuda
Armenia
Australia
Austria
Azerbaijan
Bahrain
Barbados
Belarus
Belgium
Belize
Benin
Bosnia and Herzegovina
Botswana
Brazil
Bulgaria
Burkina Faso
Cameroon
Canada
Central African Republic
Chad
China
Colombia
Comoros
Congo
Costa Rica
Côte d'Ivoire
Croatia
Cuba
Cyprus
Czech Republic
Democratic People's
Republic of Korea
Denmark
Dominica
Dominican Republic
Ecuador
Egypt
El Salvador
Equatorial Guinea
Estonia
Finland
France,
Gabon
Gambia
Georgia
Germany
Ghana
Greece
Grenada
Guatemala
Guinea
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
Guinea-Bissau
Honduras
Hungary
Iceland
India
Indonesia
Ireland
Israel
Italy
Japan
Kazakhstan
Kenya
Kyrgyzstan
Lao People’s Dem Rep.
Latvia
Lesotho
Liberia
Libyan Arab Jamahiriya
Liechtenstein
Lithuania
Luxembourg
Madagascar
Malawi
Malaysia
Mali
Malta
Mauritania
Mexico
Monaco
Mongolia
Montenegro
Morocco
Mozambique
Namibia
Netherlands
New Zealand
Nicaragua
Niger
Nigeria
Norway
Oman
Papua New Guinea
Philippines
Poland
Portugal
Republic of Korea
Republic of Moldova
Romania
Russian Federation
Saint Lucia
Saint Vincent and
the Grenadines
San Marino
Sao Tomé e Principe
Senegal
Seychelles
Sierra Leone
Singapore
Slovakia
Slovenia
South Africa
Spain
Sri Lanka
Sudan
Swaziland
St. Kitts and Nevis
Sweden
Switzerland
Syrian Arab Republic
Tajikistan
The former Yugoslav
Republic of Macedonia
Togo
Trinidad and Tobago
Tunisia
Turkey
Turkmenistan
Uganda
Ukraine
United Arab Emirates
United Kingdom
United Republic of Tanzania
United States of America
Uzbekistan
Viet Nam
Yugoslavia
Zambia
Zimbabwe
5
New PCT States?
• Chile
– Chilean government officials announced PCT accession for
March 2, so entry into force would be June 2
• Peru
– PCT approved by President on January 10, 2008
• Watch the PCT Newsletter and our listserves for more details
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Supplementary International Search:
Objectives
• To reply to PCT applicants’ concerns about new prior art being
found once they have already incurred significant costs and
entered national phase
• To reduce this risk by introducing optional supplementary
searches in the PCT international phase
• To expand the scope of search in the international phase taking
into account the growing linguistic diversity of the prior art
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Main Features
•
•
•
•
•
An optional service for applicants,
– it is currently offered by three Authorities: SE, RU and XN
– more Authorities, including at least AT, EP and FI, are expected to
offer the service in 2009-2010
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
Supplementary international search (SIS) covers only one invention –
there is no option for paying additional fees
Available for any international application, irrespective of the filing date,
for which the time limit of 19 months to request the supplementary
international search expires on or after 1 January 2009
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Deciding When to Use the Service
• The main international search report is intended to be of a high
quality, sufficient for normal purposes
• Consequently, this service need not be used for every
international application, but to give extra information in some
cases where the applicant believes that this additional expense
in the international phase will be worthwhile
• Before requesting supplementary search, applicants should
consider:
– the main international search report
– the commercial value of the particular invention
– the number of relevant disclosures in languages that are not
a speciality of the main ISA
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Timing and Fees
• The supplementary search request must be filed with the
International Bureau within 19 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 request and
international search report (ISR), or 22 months from the priority
date, at latest, if the main ISR is late
• The SIS Report is established by 28 months from the priority
date
*(see PCT Applicant’s Guide, Annex SISA(RU),(SE),(XN))
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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SIS in the PCT System
(months)
0
12
File local
application
File PCT
application
International
publication
18 19
16
International
search report
& written
opinion
Supplementary
international search
report(s) established
Enter
national
phase
22
28
(optional)
File demand
for International
preliminary
examination
(optional)
International
preliminary
report on
patentability
30
Request for
supplementary
international
search
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Supplementary Search Request (1)
• The request must be filed using the supplementary search
request (Form PCT/IB/375), specifying
– which Authority is to carry out the supplementary search
– (in certain circumstances - see Unity of Invention) which
claims are to be searched
• The request may need to be accompanied by:
– a translation of the international application into a language
accepted by the Authority
– any sequence listing in electronic format*
* (see PCT Applicant’s Guide, Annex SISA(RU),(SE),(XN))
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Supplementary Search Request (2)
• An appointed agent can also act before the Authority specified
for supplementary international search; applicants may
nevertheless, if they so wish, appoint an agent specifically to
represent them before this Authority
• If fees are not paid within one month from the date of filing of
the request, the IB will invite the applicant to pay the missing
fees, together with a late payment fee, within a (additional)
month from the date of the invitation (Form PCT/IB/377)
• The request is considered withdrawn if the fees for the
supplementary search are not paid, following the above
described invitation procedure
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Unity of Invention
• Only one invention is searched – there is no option of paying
additional search fees for additional inventions
• Usually the first claimed invention is searched, but if the main
ISA has found lack of unity of invention, the applicant may
request supplementary search to focus on an invention other
than the first
– note that the Authority is not (usually) obliged to search
inventions which have not been searched by the main ISA
• The Authority is not obliged to follow the views of the main ISA
on unity of invention
• A review procedure is available which is similar to the “protest”
procedure for the main search
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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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)
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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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
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Supplementary International Search Report
• The supplementary international search report (Form PCT/SISA/501) is
very similar to the ISR, but:
– it does not contain the classification of the international application or
comments on the title and abstract
– it need not contain citations of documents contained in the ISR
unless cited in conjunction with a new reference not cited in the ISR
– it may contain explanations regarding:
• citations that are considered relevant (these are more detailed
than references in the ISR)
• the scope of the SIS (particularly where the ISR is late and
assumptions have been made on the likely scope of main
search)
• No written opinion is issued with the supplementary international search
report
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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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 on PATENTSCOPE®
(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
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Entry into the National Phase
• On the basis of the international search report and
supplementary international search report(s), the applicant is in
a better position to evaluate, with reasonable accuracy, the
chances of obtaining a patent in the national phase and,
consequently, whether the expenses associated with national
phase entries are justified
• Designated Offices can have greater confidence in the results of
the international phase - reducing the need for further national
searches
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Other 2009 PCT Developments
• July 1, 2009 Rule changes, including new practice on furnishing claim
amendments (“complete set”)
• July 1, 2009 Administrative Instruction/practice changes on sequence
listings
– no page fees payable for sequence listing filed in Annex C/ST.25 text
format as part of an IA filed in electronic form, but full page fees
payable for all pages of a sequence listing filed in image format (e.g.
PDF) or on paper
– no longer any page fee benefits for tables relating to sequence
listings
– mixed mode sequence listing filings no longer available
– all sequence listings will be made available via PATENTSCOPE®,
whether part of the IA or only furnished for search purposes
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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Things we’re working on
• Private file inspection
– Document upload system pilot begins March 2009 (limited
number of test users)
• Full electronic processing and communication
– Email notifications of IB notifications to applicants.
• PCT distance learning course
• PCT webinars for the user community, in addition to existing
program of seminars
– Watch for these—no cost updates on PCT practice
– Open to providing these for companies and law firms
• New resources for PCT applicants
• PatentScope® enhancements
– Full file contents will be available for IAs filed on or after
January 1, 2009
– National phase entry data now for 34 countries
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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For any further questions…
PCT Infoline
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
Telephone
Fax
e-mail
+41 22 338 83 38
+41 22 338 83 39
[email protected]
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THANK YOU
2009 PCT Update and Developments
International Bureau of WIPO
January 2009
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