PCT Status Report - WIPO · Sudan Swaziland St. Kitts and Nevis Sweden Switzerland Syrian Arab...

PCT Status Report

September 2018 Advanced User Seminar

Patent Cooperation Treaty Overview

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

Use of the Patent Cooperation Treaty (PCT)

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 Application Filings--projected

•Source: Economics and Statistics Division, WIPO

PCT applications by filing route

PCT Coverage Today

=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-2Geneva17-18.09.2018

PCT Timeline


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?)


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

Best practices Getting ready to file: preparing

the filing of an international (PCT) application


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.)


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)


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?


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

Best practices (cont’d):Filing of an international (PCT)

application

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)

Best practices (cont’d): building up on practical

(problematic) cases

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

Filing of Demand for International Preliminary Examination

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

Best practices (cont’d): What can go wrong? Correction procedures

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


International Search

IS&PE 314.09.2018


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 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


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 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


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


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


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


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


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 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


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


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


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


Sample of Written Opinion of the ISA (part)

Patentability assessmentof claims

Reasoning supporting the assessment

IS&PE 1714.09.2018


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


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


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


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


International Preliminary Examination

IS&PE 2214.09.2018


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


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


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


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


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


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


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


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


Content of the IPER (1)

The IPER serves as a non-binding opinion given to the applicant to indicate that



IS&PE 3114.09.2018



The IPER (PCT/IPEA/409) has the same format and content as the written opinion of the ISA reasoned statement with regard to novelty,




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


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



■ 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


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


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


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


Supplementary International Search

IS&PE 3814.09.2018


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


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


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


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


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


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


Collaborative Search and Examination Pilot

IS&PE 4514.09.2018


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


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 4814.09.2018


Thank you!

[email protected]

+41 22 338 7179

IS&PE 4914.09.2018


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 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


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


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


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


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


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


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


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


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


Written opinion of the ISA

■ The WO/ISA serves as a non-binding opinion given to the applicant to indicate that



Note: prior art for WO/ISA purposes, priority date vs. international filing date

IS&PE 6014.09.2018


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



IS&PE 6114.09.2018


Sample of Written Opinion of the ISA (part)

Patentability assessmentof claims

Reasoning supporting the assessment

IS&PE 6214.09.2018


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


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


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


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


International Preliminary Examination

IS&PE 6714.09.2018


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


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


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


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


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


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


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


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 IPER serves as a non-binding opinion given to the applicant to indicate that



IS&PE 7614.09.2018



The IPER (PCT/IPEA/409) has the same format and content as the written opinion of the ISA reasoned statement with regard to novelty,




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 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



■ 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


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


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


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


Supplementary International Search

IS&PE 8314.09.2018


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


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


SIS in the PCT System

(months)

File PCTapplication

120 30


& written opinion

16 18

Internationalpublication

(optional)File demand for

international preliminary examination


Enternationalphase

28

International preliminary report on

patentability

22

(optional)Request for

supplementary international

search

Supplementary international search report

IS&PE 8614.09.2018


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


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


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


Collaborative Search and Examination Pilot (IP5 Offices)

IS&PE 9014.09.2018



■ 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



■ 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


Session 3:Legal considerations when e-filing PCT applications and subsequent documents


Silke WeissLegal OfficerPCT Legal and User Relations Division

GE presentation (SW)-214.09.2018


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


e-filing PCT Applications



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



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



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



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



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



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



Drawings (2) – Example of submitted drawings



Drawings (3) – Example of published drawings



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



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



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)



Electronic signature requirements (4)



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



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)



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


Post-filing Actions



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.



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



■ 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)



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



■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--



■ 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



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



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



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



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



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



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)



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)



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



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”)


Session 5:Review of particular safeguard provisions

Matthias REISCHLE-PARKDeputy DirectorPCT Legal and User Support SectionPCT Legal and User Relations Division



Omission of sensitive information

Session 5 Safeguard Provisions-313.09.2018


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.



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



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


Restoration of the priority right



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.



Restoration of the right of priority -Competent Authorities

■RO during the international phase (Rule 26bis.3)

■DO during the national phase(Rule 49ter.2)



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



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



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



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



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


Incorporation by reference of missing elements or parts



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.



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



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



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



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))



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



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



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


Rectification of an obvious mistake



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.



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



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



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))


Session 6:Best practices for successfulnational phase entry

Matthias REISCHLE-PARKDeputy DirectorPCT Legal and User Support SectionPCT Legal and User Relations Division


Session 6 National Phase-213.09.2018


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



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



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



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



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



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?



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



Special national requirements

■ Time limit under Rule 51bis.3

■ Declarations should now pay off

■ Translation of the priority document (Rule 51bis.1(e))



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


Recent & Futuredev-217.09.2018

Overview

Amendments to PCT Regulations as from 1 July 2018

PCT Working Group 2018 results

Recent Developments

Future Developments

Amendments to the PCT Regulations as from 1 July 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


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

PCT Working Group 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 developments


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


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)


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


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


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


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


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)


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



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


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



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

WIPO TRANSLATE: HOW DOES IT WORK?


CLIR

CLIR: the interface


CLIR: an example


Chemical Search function




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


Example: bicycle fork



“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


(months)

File PCTapplication

120 30


& written opinion

16

(optional)File

demand forInternational

preliminaryexamination


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


“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


“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


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)


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]


PPH and PCT: Statistics


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


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

Future developments


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

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