Transcript PCT Update 2011 Webinar (English) May 30, 2011 Quan-Ling Sim Head, PCT Outreach and User Relations Section.

PCT Update 2011
Webinar (English)
May 30, 2011
Quan-Ling Sim
Head, PCT Outreach and User Relations Section
143 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
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
Kenya
Kyrgyzstan
Lao People’s Dem Rep.
Latvia
Lesotho
Liberia
Libyan Arab Jamahiriya
Liechtenstein
Lithuania
Luxembourg
Madagascar
Malawi
Poland
Malaysia
Portugal
Mali
Republic of Korea
Malta
Republic of Moldova
Mauritania
Romania
Mexico
Russian Federation
Monaco
Saint Lucia
Mongolia
Saint Vincent and
Montenegro
the Grenadines
Morocco
San Marino
Mozambique
Sao Tomé e Principe
Namibia
Senegal
Netherlands
Serbia
New Zealand
Seychelles
Nicaragua
Sierra Leone
Niger
Singapore
Nigeria
Slovakia
Norway
Slovenia
Oman
Papua New Guinea South Africa
Spain
Peru
Sri Lanka
Philippines
Qatar (3 August 2011) Sudan
Swaziland
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
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PCT Statistics
180000
Overall +5.7% in 2010
160000
140000
Source: PCT Yearly Review 2010
http://www.wipo.int/pct/en/activity/pct_2010.pdf
120000
100000
80000
60000
40000
20000
0
78
80
82
84
86
88
90
92
94
96
98
00
02
04
06
08
10
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International applications received in
2010 by country of origin
45,000
CN: +55.6%
40,000
KR: +20.3%
35,000
JP: +8.0%
2010: the year East Asia overtook
North America and Western
Europe to become the subregion
accounting for most PCT filings
DE: +4.5%
30,000
US: -1.6%
25,000
20,000
15,000
10,000
5,000
0
US
JP
DE
CN
KR
FR
GB
NL
CH
SE
CA
IT
FI
AU
ES
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Top PCT Applicants 2010
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
Panasonic—JP (2154)
ZTE—CN (1868)
Qualcomm—US (1677)
Huawei—CN (1528)
Philips—NL (1435)
Bosch—DE (1301)
LG Electronics—KR (1298)
Sharp—JP (1286)
Ericsson—SE (1149)
NEC—JP (1106)
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
Toyota—JP (1095)
Siemens—DE (833)
BASF—DE (818)
Mitsubishi Electric—JP (726)
Nokia—FI (632)
3M—US (586)
Samsung Electronics—KR (578)
HP—US (564)
Fujitsu—JP (476)
Microsoft—US (469)
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2 millionth PCT application
Qualcomm files landmark application (April 2011)
http://www.wipo.int/pressroom/en/articles/2011/article
_0013.html
2,000,000
1,800,000
1,600,000
1,400,000
1,200,000
1,000,000
800,000
600,000
400,000
200,000
0
1996
2000
2004
2011
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July 1, 2011 rule changes (1)
PCT/A/41/2 REV.
 http://www.wipo.int/edocs/mdocs/govbody/en/pct_a_41/pct_a_41_2_re
v.pdf
Rectifications of obvious mistakes authorized by the IPEA: Decisions from
the IPEA should not be made publicly available (see modified Rule 48.2(i))
Article 19 and 34 amendments and accompanying letters
 Translation to be furnished upon national phase entry must be a
translation of the complete set of claims furnished under Rules 46.5(a)
and 66.8(c) in replacement of claims as originally filed (see modified
Rules 49.5(a))
 IPEA should be provided with the letter indicating the basis in the
application as filed for any amendments made under Articles 19 and
34 if applicants want the IPEA to take them into account + translation
where required (modified Rules 53.9 and 55.3)
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July 1, 2011 rule changes (2)
Annexes to the IPRP Chapter II Report shall contain
 Replacement sheets containing Article 19 and 34
amendments + letters
 If letter indicating the basis for the amendments is
missing the IPRP Chapter II may be established
as if the amendments were not made (modified
Rule 70.2(c-bis))
 Rectifications of obvious mistakes authorized by the
IPEA under Rule 91.1(b)(iii) shall be annexed to the
IPRP Chapter II (see modified Rule 70.16)
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July 1, 2011 rule changes (3)
Entry into force
Amendments should apply to international
applications whose international filing date is on or
after 1 July 2011
Amendments should apply to international
applications in respect of which the applicant has
performed the acts under Articles 22 or 39 on or after
1 July 2011 and in respect of which an amendment
under Article 19 or 34 was filed on or after 1 July 2009
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PCT Working Group (1)
Meeting: June 6-10, 2011
 http://www.wipo.int/meetings/en/details.jsp?meeting_id=22683
Agenda
 Future development of PCT
 Implementation of Recommendations to Improve the
Functioning of the PCT System
 Study: Root causes of surge in patent applications
 Study: Coordination of technical assistance for developing
countries
 Study: Disseminating technical information and facilitating
access to technology for developing countries
 Third party observations
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PCT Working Group (2)
Agenda (cont):
Proposed changes
 PCT Minimum documentation—addition of
Chinese patent documents
 PCT Sequence Listing Standard
 Force majeure rule (excuse for delay in meeting
PCT time limits)
 Other minor rule amendments (Rules 17.1(b-bis)
and 20.7(b))
Supplementary International Search
PCT Online Services (ePCT)
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Availability for license
PCT working group document PCT/WG/4/3
 Implementation of recommendations to improve the functioning
of the PCT, page 21, paragraphs 100-101
System can be implemented by the creation of a new form that
applicants can complete with indications that a PCT application is
available for license, and optionally, on what terms
Availability for license information to be published and searchable
on PATENTSCOPE
In the final stages of consultation with the expectation that such a
system will become operational sometime around July 1, 2011
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Third Party Observations (1)
PCT working group document PCT/WG/4/7
Mainly web-based system
Integrated into PATENTSCOPE
Initially limited to prior art relevant to novelty and
inventive step, and associated explanations
Expected delivery: early 2012
If member states agree, could be expanded to permit
observations on clarity and sufficiency of disclosure
Free-of-charge
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Third Party Observations (2)
Submission period from publication date until 28 months
from priority
Identification of submitter required, but can opt to not
have identification disclosed to applicant and public
All submitted observations made available on
PATENTSCOPE
Third-party uploaded documents not available via
PATENTSCOPE but available to IAs/DOs/EOs
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Third Party Observations (3)
Limit of 10 citations in single observation, and free text
per citation limited to 2000 characters
Applicants notified of observations, and right to respond;
responses available on PATENTSCOPE
IAs/DOs/EOs notified of observations and responses
IB will moderate for spam, abuse and copyright
infringement
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ePCT (1)
A suite of secure online services built around a centralized interactive
electronic archive of PCT documents and data
WIPO user account and digital certificate required to access ePCT
Stage 1
 Launched in production mode on May 2, 2011 (limited test users)
 Private file inspection of the IB’s electronic dossier (international
applications filed at RO/IB as of 1 January 2009) before publication
 Up-to-date bibliographic data (IASR)
 Documents not publicly available in PATENTSCOPE after publication
 Integration of existing online services (online document upload and
later, also PCT e-payment)
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ePCT (2)
Features being tested
Graphical timeline showing certain important events
and deadlines
Multiple PCT application association
“Front page” preview
Improved e-mail notifications regarding file actions,
e.g., correspondence, forms, access rights
File action history
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ePCT (3)
Features being tested (2)
 Possibilities for directly accessing (and bookmarking) specific
international applications or documents
 Download of live bibliographic data in XML format suitable for
download into agents’ systems
 On-the-fly generation of cover letter at the time of online upload
of documents to satisfy PCT rule 92 cover letter requirement
 Download certified copies of documents in IB's file directly from
ePCT (PDF documents digitally signed by a certificate in the
name of the International Bureau of WIPO)
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ePCT (4)
Further stages
 Extend to international applications filed electronically with other
Receiving Offices and other digital certificates
 Extend to international applications filed on paper or physical
media
 Introduction of additional online services, e.g., web-based efiling
 Extension of ePCT to procedures before national Offices in
varying capacities (RO, ISA, SISA, IPEA, DO, EO) that wish to
participate
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Other PCT developments
Document upload
 http://www.wipo.int/pct/en/service_center/
Priority Document Access Service (DAS)
 http://www.wipo.int/patentscope/en/priority_documen
ts/
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Document upload
“A simple and safe digital solution for submitting quickly and
efficiently to the International Bureau (IB) and to the receiving Office
of the International Bureau (RO/IB) post-filing electronic documents.”
Documents types
 Article 19 amendments
 Supplementary International Search
 Other (correspondence, withdrawals, power of attorney, Rule
92bis changes, informal comments)
 Declarations under Rule 4.17
 Corrections/Rectifications (restoration, priority claim, incorporate
by reference, replacement sheets under Rule 26)
 Translations
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Priority Document Access Service
(DAS)
DAS allows applicants to request the IB to retrieve
priority documents from digital libraries
Access through DAS server via WIPO website
 www.wipo.int/patentscope/en/priority_documents/
Applicant controls list of Offices entitled to access
Available for priority applications for which the 16-month
time limit under Rule 17.1(b-bis)(ii) had not expired on
1 January 2010 and which were filed with a DAS
participating Office
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DAS participating Offices
AU –
ES –
FI –
GB
IB
JP
KR
US
–
–
–
–
–
IP Australia
Spanish Patent and Trademark Office
National Board of Patents and Registration of
Finland
UK IP Office
International Bureau
Japan Patent Office
Korean Intellectual Property Office
United States Patent and Trademark Office
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Main steps for using DAS (1)
Request the OFF to make
the earlier application
available via DAS
File the PCT international
application and request
the IB to retrieve the
priority document via
DAS by checking the
appropriate box on the
request form
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Main steps for using DAS (2)
Log in to the DAS portal and enter the priority document
number, the access code and the text from the
verification box.
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Main steps for using DAS (3)
Grant access permission to the IB to retrieve the priority
document (this step must be taken before the expiration
of the 16-month time limit)
(screen shots on following slides)
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Main steps for using DAS (4)
The IB retrieves the priority document via DAS and
sends a confirmation of retrieval to the applicant by
means of the form PCT/IB/304
Procedures of participating offices and DAS user guide
http://www.wipo.int/patentscope/en/priority_documents/
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PATENTSCOPE
Close to 30 national/regional patent collections in PATENTSCOPE
 Search database of over 7.7 million patent documents, including
more than 1.8 million published PCT applications
On-the-fly translations of PCT descriptions and drawings (and
patents in national collections) in 53 languages via Google Translate
CLIR (Cross-Lingual Information Retrieval)
Enhanced machine translation tool for titles and abstracts based on
human translations of title and abstract pairs
 En/Fr, Fr/En, En/Cn, Cn/En currently available
 Kr/En, Jp/En coming soon
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WARNING: Requests for Payment of Fees
“It has come to the attention of the International Bureau
that PCT applicants and agents are receiving invitations
to pay fees that do not come from the International
Bureau of WIPO and are unrelated to the processing of
international applications under the PCT. Whatever
registration services might be offered in such invitations,
they bear no connection to WIPO or to any of its official
publications.”
http://www.wipo.int/pct/en/warning/pct_warning.htm
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PCT-PPH
PCT-Patent Prosecution Highway (PCT-PPH)
Accelerated national phase processing based on
positive PCT work products
Participating offices are AT, AU, CA, EP, ES, FI, JP,
KR, RU, SE, US
http://www.wipo.int/pct/en/filing/pct_pph.html
Streamlining/harmonization being worked on (“PPH 2.0”)
PCT-PPH experiences being solicited by the
International Bureau
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PCT training options
PCT Distance learning course available in all 10
publication languages
PCT Webinars
 Providing free updates on developments in PCT
procedures
 Upon request also for companies or law firms
More information on the PCT resources website:
www.wipo.int/pct
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Questions / Feedback
PCT Information Service
 Telephone: (+41-22) 338 83 38
 Facsimile: (+41-22) 338 83 39
 E-mail: [email protected]
Today’s webinar and slides will be available for download from the
PCT webinar page over the next few days:
 http://www.wipo.int/pct/en/seminar/webinars/index.html
Webinar survey
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