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

Patent Cooperation Treaty (PCT)
Introduction and Future Developments
Oslo, October 2013
Claus Matthes
Director, PCT Business Development Division
Using the traditional patent system to
seek multinational patent protection
(months)
0
12
File
applications
abroad
File
application
locally
Local patent application followed within 12 months by multiple foreign
applications claiming priority under Paris Convention:
- multiple formality requirements
- multiple searches
- multiple publications
- multiple examinations and prosecutions of applications
- translations and national fees required at 12 months
Some rationalization because of regional arrangements:
ARIPO, EAPO, EPO, OAPI
2
3
The PCT
─ 1970
Basic idea: simplify the procedure for obtaining patent
protection in many countries, making it more efficient
and economical for:
users of the patent system: makes available a filing
tool for applicants for foreign patent filings; and
patent offices: makes available a tool for effective
processing of patent applications by offices of PCT
Member States willing to exploit work done by others
4
PCT Basics
Filing Tool for applicants:
Only one application filed, containing, by default, the
designation of all States (for every kind of protection available)
and usual priority claim(s)
Has the effect of a regular national filing (including
establishment of a priority date) in each designated State: the
international filing date is the filing date in each designated
State
Filed in one language
Filed with one Office
One set of formality requirements
Delays national processing until 30 months from priority date
International reports improve basis for
decision making
5
PCT Basics
Work sharing tool for Offices:
Central formality checking
Central international publication
International search report (ISR)
International Preliminary Reports on Patentability (preliminary,
non-binding opinion on novelty, inventive step (nonobviousness) and industrial applicability
Chapter I
Chapter II
6
Traditional patent system
vs. PCT system
Fees for:
--translations
--Office fees
--local agents
(months)
Traditional
0
File
applications
abroad
12
Fees for:
--translations
--Office fees
--local agents
File local
application
International
publication
(months)
PCT
0
File local
application
Enter
national
phase
12
16
File PCT
application
International
search report &
written opinion
18
22
28
(optional)
File
demand for
International
preliminary
examination
(optional)
International
preliminary
report on
patentability
30
7
The PCT System
(months)
0
File local
application
Typically a national
patent application in
the home country of
the applicant
12
File PCT
application
International
publication
16
18
International
search report
& written
opinion
Enter
national
phase
22
28
(optional)
File
demand for
International
preliminary
examination
(optional)
International
preliminary
report on
patentability
30
8
The PCT System
(months)
0
12
File local
application
File PCT
application
International
publication
16
18
International
search report
& written
opinion
Typically filed in same
national patent office--one
set of fees, one language,
one set of formality
requirements--and legal
effect in all PCT States
Enter
national
phase
22
28
(optional)
File
demand for
International
preliminary
examination
(optional)
International
preliminary
report on
patentability
30
9
The PCT System
(months)
0
12
File local
application
File PCT
application
International
publication
16
18
International
search report
& written
opinion
Report on state of
the art (prior art
documents and their
relevance) + initial
patentability opinion
Enter
national
phase
22
28
(optional)
File
demand for
International
preliminary
examination
(optional)
International
preliminary
report on
patentability
30
10
PCT International Searching Authorities
The ISAs are the following 18 offices:
Australia
Austria
Brazil
Canada
China
Chile (not yet operating)
Egypt
Finland
India (October 15, 2013)
Israel
Japan
Republic of Korea
Russian Federation
Spain
Sweden
United States of America
European Patent Office
Nordic Patent Institute
11
Prior art for international search
 Prior art:
everything which has been made available to the public,
anywhere in the world,
by means of written disclosure,
which is capable of being of assistance in determining that
the claimed invention is or is not new and that it does or
does not involve an inventive step,
provided the making available to the public occurred prior
to the international filing date.
 PCT Minimum Documentation (Rule 34)
12
Example: PCT International Search Report
Symbols indicating
which aspect of
patentability
the document cited is
relevant to (for example,
novelty, inventive step,
etc.)
Documents relevant to
whether or not your
invention may be
patentable
The claim numbers
in your application to
which the document is
relevant
13
Example: PCT Written opinion of the International Searching Authority
Reasoning
supporting the
assessment
Patentability
assessment
of claims
14
The PCT System
Disclosing to world
content of application
in standardized way
(months)
0
12
File local
application
File PCT
application
International
publication
16
18
International
search report
& written
opinion
Enter
national
phase
22
28
(optional)
File
demand for
International
preliminary
examination
(optional)
International
preliminary
report on
patentability
30
15
The PCT System
(months)
0
12
File local
application
File PCT
application
International
publication
16
18
International
search report
& written
opinion
Enter
national
phase
22
(optional)
File
demand for
International
preliminary
examination
Request an additional
patentability analysis on basis
of amended application
28
(optional)
International
preliminary
report on
patentability
30
16
The PCT System
(months)
0
12
File local
application
File PCT
application
International
publication
16
18
International
search report
& written
opinion
Enter
national
phase
22
28
30
(optional)
File
demand for
International
preliminary
examination
(optional)
International
preliminary
report on
patentability
Additional patentability
analysis, designed to assist
in national phase decisionmaking
17
The PCT System
Express intention
and take steps to
pursue to grant in
various states
(months)
0
12
File local
application
File PCT
application
International
publication
16
18
International
search report
& written
opinion
Enter
national
phase
22
28
(optional)
File
demand for
International
preliminary
examination
(optional)
International
preliminary
report on
patentability
30
18
The PCT
19
The PCT in 1978
PCT Coverage Today
148 PCT States
=PCT
Albania
Algeria
Angola
Antigua and Barbuda
Armenia
Australia
Austria
Azerbaijan
Bahrain
Barbados
Belarus
Belgium
Belize
Benin
Bosnia and Herzegovina
Botswana
Brazil
Brunei Darussalam
Bulgaria
Burkina Faso
Cameroon
Canada
Central African Republic
Chad
Chile
China
Colombia
Comoros
Congo
Costa Rica
Côte d'Ivoire
Croatia
Cuba
Cyprus
Czech Republic
Democratic People's
Republic of Korea
Denmark
Dominica
Dominican Republic
Ecuador
Egypt
El Salvador
Equatorial Guinea
Estonia
Finland
France,
Gabon
Gambia
Georgia
Germany
Ghana
Greece
Grenada
Guatemala
Guinea
Poland
Portugal
Qatar
Guinea-Bissau
Malawi
Republic of Korea
Honduras
Malaysia
Republic of Moldova
Hungary
Mali
Romania
Iceland
Malta
Rwanda
India
Mauritania
Russian Federation
Indonesia
Saint Lucia
Iran (Islamic Republic of) Mexico
Monaco
Saint Vincent and
(4 Oct. 2013)
Mongolia
the Grenadines
Ireland
Montenegro
San Marino
Israel
Morocco
Sao Tomé e Principe
Italy
Mozambique
Saudi Arabia (3 Aug. 2013)
Japan
Namibia
Senegal
Kazakhstan
Netherlands
Serbia
Kenya
New Zealand
Seychelles
Kyrgyzstan
Nicaragua
Sierra Leone
Lao People’s Dem Rep.
Niger
Singapore
Latvia
Nigeria
Slovakia
Lesotho
Norway
Slovenia
Liberia
Oman
South Africa
Libyan Arab Jamahiriya
Panama
Spain
Liechtenstein
Papua New Guinea Sri Lanka
Lithuania
Peru
Sudan
Luxembourg
Philippines
Swaziland
Madagascar
St. Kitts and Nevis
Sweden
Switzerland
Syrian Arab Republic
Tajikistan
Thailand
The former Yugoslav
Republic of Macedonia
Togo
Trinidad and Tobago
Tunisia
Turkey
Turkmenistan
Uganda
Ukraine
United Arab Emirates
United Kingdom
United Republic of Tanzania
United States of America
Uzbekistan
Viet Nam
Zambia
Zimbabwe
Countries not yet in PCT
Afghanistan
Andorra
Argentina
Bahamas
Bangladesh
Bhutan
Bolivia
Burundi
Cambodia
Cape Verde
Democratic Republic of
Congo
Djibouti
Eritrea
Ethiopia
Fiji
Guyana
Haiti
Iraq
Jamaica
Jordan
Kiribati
Kuwait
Lebanon
Maldives
Marshall Islands
Mauritius
Micronesia
Myanmar
Nauru
Nepal
Pakistan
Palau
Paraguay
Samoa
Solomon Islands
Somalia
South Sudan
Suriname
Timor-Leste
Tonga
Tuvalu
Uruguay
Vanuatu
Venezuela
Yemen
(45)
PCT Applications 2012
200000
180000
NL: +14%
160000
CN: +13.6%
140000
KR: +13.4%
120000
FI: +13.2%
JP: +12.3%
100000
80000
60000
40000
20000
0
78
80
82
194,400 PCT applications
+6.6% in 2012
84
86
88
90
92
94
96
98
00
87.3% fully electronic
Forecasting +3.8% in 2013
02
04
06
08
10
12
Trends in PCT filing
International applications received in
2012 by country of origin
60'000
50'000
40'000
30'000
20'000
10'000
0
US
JP
DE
CN
KR
FR
GB
CH
Top 15 countries responsible for 92.7% of IAs filed in 2012
NL
SE
IT
CA
FI
AU
ES
PCT National phase entries—total
507,400 national phase entries estimated in 2011 (+ 4.2%)
431,800 (about 85%) of NPEs are from non-resident applicants, making PCT NPEs responsible for 54.9% of
all non-resident patent applications filed worldwide in 2011
PCT National phase entries 2011—
by target DO (1)
USPTO most preferred DO for National Phase Entries; had highest growth among the IP5 Offices (+7.3%)
Brazil (+12.6%) and India (+9.8%) had highest growth rates among top 10 Offices
PCT National phase entries 2011—
by target DO (2)
Top PCT Applicants 2012
*(…) of published
PCT applications
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
ZTE Corporation—CN (3906)*
Panasonic—JP (2951)
Sharp—JP (2001)
Huawei—CN (1801)
Bosch—DE (1775)
Toyota—JP (1652)
Qualcomm—US (1305)
Siemens—DE (1272)
Philips—NL (1230)
Ericsson—SE (1197)
LG Electronics—KR (1094)
Mitsubishi Electric—JP (1042)
NEC—JP (999)
Fujifilm Corporation (891)
Hitachi—JP (745)
Samsung Electronics—KR (683)
Fujitsu—JP (671)
Nokia—FI (670)
BASF—DE (644)
Intel—US (640)
Top University PCT Applicants 2012
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
University of California (US)
MIT (US)
Harvard University (US)
Johns Hopkins (US)
Columbia University (US)
University of Texas (US)
Seoul National University (KR)
Leland Stanford University (US)
Peking University (CN)
University of Florida (US)
Cal Tech (US)
Korea Advanced Institute of Science and Technology (KR)
Cornell University (US)
University of Tokyo (JP)
Yonsei University (KR)
Isis Innovation Limited (GB)
Tsinghua University (CN)
Kyoto University (JP)
University of Michigan (US)
Purdue University (US)
Top Government/Research Institution
PCT Applicants 2012
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
Commissariat a l’Energie Atomique et aux Energies Alternatives (France)
Fraunhofer-Gesellschaft zur Forderung Der Angewandten Forschung e.v. (Germany)
Centre National de la Recherche Scientifique (CNRS) (France)
China Academy of Telecommunications Technology
Institute of Microelectronics of Chinese Academy of Sciences (China)
Mimos Berhad (Malaysia)
Institut National de la Sante et de la Recherche Medicale (INSERM) (France)
Electronics & Telecommunications Research Institute of Korea
Agency of Science, Technology and Research (Singapore)
Consejo Superior de Investigaciones Cientificas (CSIC) (Spain)
United States of America, represented by the Secretary, Department of Health and
Human Services
National Institute of Advanced Industrial Science and Technology (Japan)
Council of Scientific and Industrial Research (India)
Korea Research Institute of BioScience and Biotechnology
Nederlandse Organisatie voor Toegepast-Natuurwetenschappelijk Onderzoek Tno
(Netherlands)
Max Plank Institute (Germany)
32
The PCT
─ 1970 to today
Paris route
23.9
25.9
33.3
34.1
39.0
40.0
43.8
PCT national phase entries
47.5
46.4
47.3
47.4
49.3
50.8
53.2
54.5
55.1
54.9
Share of PCT national phase entries (%)
100
75
*
50
25
0
1995
1996
1997
1998
1999
2000
2001
2002
2003
Year
2004
2005
2006
2007
2008
2009
2010
2011
33
The PCT
─ 1970 to today
34
Certain PCT Advantages
The PCT, as the cornerstone of the international patent
system, provides a worldwide system for simplified filing and
processing of patent applications, which:
1. postpones the major costs associated with internationalizing a
patent application
2. provides a strong basis for patenting decisions
3. harmonizes formal requirements
4. protects applicant from certain inadvertent errors
5. evolves to meet user needs
6. is used by the world’s major corporations, universities and
research institutions when they seek international patent
protection
35
PCT Challenges
Improving the quality of PCT international phase work products
Building trust between patent offices, so that duplicative international
phase and national phase processing can be reduced
Language issues
 33% of applications filed in Chinese, Japanese and Korean
Helping developing countries benefit from the PCT
 15 countries responsible for 92.1% of IAs published in 2011
Making PCT accessible to applicants of all types from all Contracting
States (for example, SMEs)
Helping PCT users stay abreast of new developments and strategies
36
The PCT
─ 1970 to today
PCT extremely successful as filing tool
Harmonization of formal and procedural requirements
(beyond PCT)
National and regional laws
Patent Law Treaty (PLT)
37
The PCT
─ 1970 to today
However: PCT not as effective as work sharing tool in
practice for addressing national quality of examination and
(for some Offices) backlogs
PCT allows offices to re-use earlier work (international
reports) in a way which increases quality or reduces the
amount of work needed to achieve same level of quality
actual extent to which this is done is a decision of the
office or State concerned as a matter of policy and
efficiency
38
The PCT
─ Work Sharing Tool
Expectation was: “flying start” for offices, work should be
“rather in the nature of completing, checking and criticizing
than starting from scratch in complete isolation”
Reality is: many Offices do start “from scratch”
Perhaps not in complete isolation, but …
39
PCT Roadmap
Needed: change in approach of offices vis-à-vis the PCT
system, including a review of national procedures and
practices and of what kind of incentives are set to use the
system in a way which is beneficial to all
40
PCT Roadmap
Improve quality and consistency of international reports:
The better the quality of the tools (reports), the better
for all Contracting States: tools allow them to deal
more effectively with requirements of their national laws
The smaller the national examining capacity, the bigger
the importance of quality tools
41
PCT Roadmap
Improve quality and consistency of international reports:
Further improve quality management systems of IAs
Chapter 21 of PCT S&E Guidelines
Develop quality metrics for measuring usefulness
Management of work sharing requires metrics which
establish
what can be re-used and
its quality
Collaborative metrics study on ISR characteristics
42
PCT Roadmap
Improve quality and consistency of international reports:
Explore collaborative search and examination
Collaboration or sharing of final products?
Pilot project (EPO, KIPO, USPTO)
Third party observations system
Since July 2012
Set up quality feedback system for offices
To come
Record search strategies
Pending standardization: making available of search
strategies on PatentScope
43
PCT Roadmap
Improve quality and consistency of international reports:
Use of standardized clauses in reports
Improve explanations of relevance of cited documents
Modification of PCT S&E Guidelines
Extend opportunity for dialogue with examiner during
international preliminary examination
44
PCT Roadmap
Improve timeliness of actions in international phase
Create incentives for applicants to use system efficiently
encourage high quality applications and early
correction of defects and filing of amendments
Improve training for Offices, better coordination
notably for examiners in developing country Offices
Improve access to effective search systems
affordable access to online search systems
45
PCT Roadmap
Improve access to national search and examination
reports
PatentScope
WIPO Case
Assist Offices in digitizing national patent collections
46
PCT Roadmap
Where do we stand?
significant progress towards implementing
recommendations endorsed by Member States
Major achievement of the process to be seen in more
general terms:
Recognition of importance of PCT work product
quality
Importance of appropriate integration of PCT work
products into national patent granting procedures
Role of PCT in improving the functioning of the
international patent system as a whole
47
PCT Roadmap
Role of the PCT in effective dissemination of technical
information
Greater understanding of concerns and needs of
Contracting States in relation to the quality of
international applications and PCT work products
Greater understanding of capacity of Contracting States,
to perform their own effective search and examination
greater understanding of the needs for continued
technical assistance for developing and least
developed countries in this regard
48
PCT Roadmap
Clearly: more work needed!
Focus:
Quality
Collaboration
Technical assistance
Both applicant and Office driven arrangements
Work sharing not (yet) a universally agreed concept …
ePCT
Online portal that provides PCT services for both
applicants and offices
Available since May 2011
Provides secure and direct interaction with PCT
applications maintained by the International Bureau
Applicants may now conduct most PCT transactions
electronically
ePCT Overview
Applicant portal development
Web filing
Single portal for all actions and
info, irrespective of responsible Office
Information entered is used directly;
no more transcription errors
Live file - always up-to-date
Data checks using same functions
as IB; always up-to-date
Share drafts in ePCT like a normal
IA file - rights carry through to IA
View IA file immediately on filing(*)
Receiving Offices
International Authorities
Direct access to IB+ISA(*) file
Option of using online tools
equivalent to RO/IB
Offer e-filing without need to run
own server
Alternative to PCT-EDI with built-in
local files and records management
Direct access to IB+RO(*) file
Share access to application body,
including all updates(*) as soon as
approved by RO, IB, ISA or IPEA
(*)
feature which would be dependent on level of participation by other Office
PCT Training Options
PCT Distance learning course content available in the 10 PCT
publication languages
New: 29 video segments on WIPO’s Youtube channel about
individual PCT topics from our Basic Seminar series
PCT Webinars
providing 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 ePCT
In-person PCT Seminars and training sessions
52
53
Thank You!
Claus Matthes
Director, Patent Cooperation Treaty (PCT) Business Development Division
World Intellectual Property Organization (WIPO)
34 chemin des Colombettes, 1211 Geneva 20, Switzerland
T + 41 22 338 98 09; [email protected]; www.wipo.int