Patent Cooperation Treaty (PCT) Update 2012

National Seminar on the Occasion of Start of Operation as an International Searching and Preliminary Examination Authority

July 2, 2012

Li Maor Consultant, Division for Certain Countries in Europe and Asia

What’s New in 2012

Update on PCT membership and statistics PCT rule changes ePCT Licensing Third party observations Office to office feedback PCT-PPH PATENTSCOPE Future PCT changes / improvements 2

The PCT in 1978

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The PCT Today

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146 PCT Contracting States

Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Brunei Darussalam (24 July 2012) Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Mozambique Kenya Kyrgyzstan Lao People’s Dem Rep.

Namibia Netherlands New Zealand Latvia Lesotho Nicaragua Niger Liberia Libya Liechtenstein Nigeria Norway Oman Lithuania Luxembourg Panama (7 September 2012) Papua New Guinea Madagascar Malawi Peru Philippines Poland Malaysia Mali Malta Portugal Qatar Mauritania Mexico Republic of Korea Republic of Moldova Romania Monaco Mongolia Montenegro Rwanda Russian Federation Morocco Saint Kitts and Nevis Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland Sweden Switzerland Syrian Arab Republic Tajikistan Thailand The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United Republic of Tanzania United States of America Uzbekistan Viet Nam Zambia Zimbabwe

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Countries not yet PCT Contracting States

Afghanistan Andorra Argentina Bahamas Bangladesh Bhutan Bolivia Burundi Cambodia Cape Verde Democratic Republic of Congo Djibouti Eritrea Ethiopia Fiji Guyana Haiti Iran (Islamic Republic of) Iraq Jamaica Jordan Kiribati Kuwait Lebanon Maldives Marshall Islands Mauritius Micronesia Myanmar Nauru Nepal Pakistan Palau Paraguay Samoa Saudi Arabia Solomon Islands Somalia South Sudan Suriname Timor-Leste Tonga Tuvalu Uruguay Vanuatu Venezuela Yemen (47)

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Update on PCT International Authorities (17)

(International Search and Preliminary Examining Authorities) • Australia • Austria • Brazil • Canada • • • China

Egypt (not yet operating)

• • Finland

India (not yet operating)

Israel (operational since 1 June 2012) • Japan • Republic of Korea • Russian Federation • Spain • Sweden • United States of America • European Patent Office • Nordic Patent Institute (Denmark, Iceland, Norway)

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PCT Applications

200000 180000 160000 140000 120000 100000 80000 60000 40000 CN: +33.4% JP: +20.9% CA: +8.3% KR: +8% US: +8% CH: +6.8% FR: +4.8% SE: +4.1% DE: +4.1% RU: +17.8% BR: +15.6% IN: +13.1% 20000 0 78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08 10 +10.7% in 2011 almost 182,000 international applications

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International applications received in 2011 by country of origin

50'000 45'000 40'000 35'000 30'000 25'000 20'000 15'000 10'000 5'000 0 US JP DE CN KR FR GB CH NL SE CA IT FI AU ES IL

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

1'400 1'200 1'000 800 600 400 200 0 A T IN D K B E R U N O S G B R T R IE N Z Z A M Y LU P L M X C Z S A H U UA S I C L B B P T G R

Top PCT Applicants (2011)

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

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Israel and the PCT

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

Teva Pharmaceutical Industries, Ltd.

Ramot at Tel Aviv University Ltd.

Yeda Research and Development Co. Ltd.

Sandisk IL Ltd.

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PCT International Searching Authorities

The ISAs are the following 17 offices: Australia Austria Brazil Canada China Egypt (not yet operating) Finland India (not yet operating)

Israel (as of June 1, 2012)

Japan Republic of Korea Russian Federation Spain Sweden United States of America European Patent Office Nordic Patent Institute

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PCT Rule Changes 2012

Entry into force on July 1, 2012 (1) Inclusion of Chinese patent documents in the PCT minimum documentation (amended Rule 34) (2) New Rule 82

quater

(force majeure) Excuse of delay in meeting PCT time limits by offices where a time limit could not be met due to war, revolution, civil disorder, strike, natural calamity, etc.

Case by case determination by offices The Rule does not apply to the 12 month priority period the time limit for entry into the national phase

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ePCT

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

ePCT (2) – Main Features

Up-to-date bibliographic data and status information View processing status of documents Uploaded documents are immediately visible in the file view Automatic generation of a signed cover letter for uploaded documents to comply with PCT Rule 92.1 requirement Manage access rights Download individual documents or packages Secure messaging for contact with WIPO Processing Team Leave private notes invisible to the IB and not appearing as part of the application file History of actions taken Customizable notification preferences (e-mail warnings) Online actions for withdrawals (PCT applications and priority claims) and Rule 92

bis

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ePCT (3) – Future Improvements

Online web filing of new PCT applications

NOT

currently possible to file PCT applications using ePCT Further online actions, e.g., withdrawal of Demand, designations and/or elections, request to indicate availability for licensing, etc Third party observations Extension of ePCT to interested Offices in their various capacities (RO, ISA, SISA, IPEA, DO, EO) 17

ePCT (3) – Future Improvements

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

PCT Online Document Upload

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

Sign-up Now for ePCT

https://pct.wipo.int/ePCT ePCT video tutorials 20

Licensing Indications

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

Third Party Observations (1)

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

Third Party Observations (2)

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

Third Party Observations (3) Main Features

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

Third Party Observations (4) Role of the International Bureau

checks that observation is not obviously “spam” accepts the observation into the public file or requests modifications if there are obvious errors notifies the applicant of submission of observations, and invites applicant to respond if desired makes observations publicly available as separate document in PATENTSCOPE sends to DO/EOs compilation of all observations per document together with any cited documents, and applicant responses

Expected launch in July 2012 (TODAY!)

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Office to Office Quality Feedback

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

PCT-PPH (1)

Patent Prosecution Highway originally conceived as a bilateral agreement between two patent Offices Accelerated patent prosecution in the office of second filing based on the work product of the first office PCT-PPH is an expansion of the original PPH whereby accelerated patent prosecution may be available on the basis of positive PCT work products, e.g., written opinion, IPRP Ch.I or Ch.II

http://www.wipo.int/pct/en/filing/pct_pph.html

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PCT-PPH (2)

JPO statistics (Jan-June 2011) Average pendency from PPH request to final decision Non-PPH: 33.4 months PPH: 7.4 months

PCT-PPH: 3.5 months

Grant rate Non-PPH: 58.1% PPH: 68.3%

PCT-PPH: 93.6%

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PCT-PPH (3)

USPTO statistics (Jan-June 2011) Average pendency from PPH request to final decision Non-PPH: 33.5 months PPH: 11.6 months

PCT-PPH: 5.5 months

Grant rate Non-PPH: 47% PPH: 89%

PCT-PPH: 96%

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PCT-PPH (4)

“Using PCT-PPH to get US patents faster”—Carl Oppedahl http://www.youtube.com/watch?v=XnSShsUHXss Discussions under way to develop a uniform (plurilateral) scheme “PPH 2.0” designed to streamline and simplify the multitude of co-existing bilateral PPH arrangements 30

PATENTSCOPE (1)

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

PATENTSCOPE (2)

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

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PATENTSCOPE (3)

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

Future PCT Changes / Improvements

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

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PCT Goals (1)

Improve quality of PCT workproducts  Work with ISAs to improve quality of ISR/WO  Third party observation system   O2O quality feedback mechanism Collaborative search, in cooperation with IP5  Enable search strategy sharing between PCT authorities Further improve PCT user experience  Encouraging Offices to withdraw incompatibilities   Indication of willingness to license Priority Document Access Service  ePCT   Color drawings PCT-PPH Improve PCT-related infrastructure, in the interests of applicants and Offices  facilitate sharing of national, regional and international reports  increase in PATENTSCOPE coverage, as well as new features and contents

PCT Goals (2) Collaborative PCT Search

36 WIPO’s position: collaborative search should be part of the future of the PCT PCT past discussions  PCT Collaborative Search (and Examination) were important elements of initial “PCT Roadmap” proposal presented at the 2009 PCT WG 2nd IP5 pilot is ongoing (USPTO/EPO/KIPO), and WIPO following closely  2nd pilot scheduled for completion summer 2012 The only real question is how to implement this into the PCT

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PCT Working Group 2012 (1)

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

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PCT Working Group 2012 (2)

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

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PCT Resources

More information on the PCT resources website: www.wipo.int/pct PCT Information Service Telephone: (+41-22) 338 83 38 Facsimile: (+41-22) 338 83 39 E-mail: [email protected]

Seminars Distance learning course Webinars

THANK YOU!

[email protected]

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