PCT Update2012 AIPLA Annual Meeting

PCT Issues Committee

October 25, 2012

Jim Pooley, Deputy Director General, Innovation and Technology Sector, WIPO

Matthew Bryan, Director, PCT Legal Division, WIPO

=PCT

Albania

Algeria

AngolaAntigua and BarbudaArmenia

Australia

Austria

Azerbaijan

Bahrain Barbados

Belarus

Belgium

Belize

Benin

Bosnia and Herzegovina

Botswana Brazil

Brunei Darussalam (24 July 2012)

Bulgaria

Burkina Faso

Cameroon

Canada

Central African Republic

ChadChileChina Colombia Comoros Congo

Costa RicaCôte d'IvoireCroatiaCubaCyprusCzech RepublicDemocratic People's Republic of KoreaDenmarkDominicaDominican RepublicEcuadorEgyptEl SalvadorEquatorial Guinea EstoniaFinlandFrance,

GabonGambiaGeorgia GermanyGhana GreeceGrenadaGuatemalaGuinea

Guinea-Bissau HondurasHungaryIcelandIndiaIndonesiaIreland IsraelItalyJapanKazakhstanKenyaKyrgyzstanLao People’s Dem Rep.Latvia Lesotho LiberiaLibyan Arab JamahiriyaLiechtenstein LithuaniaLuxembourgMadagascar

MalawiMalaysiaMaliMaltaMauritaniaMexicoMonacoMongoliaMontenegroMoroccoMozambiqueNamibia Netherlands

New ZealandNicaraguaNigerNigeria

NorwayOmanPanama (7 September

2012)Papua New GuineaPeruPhilippines

PolandPortugalQatarRepublic of Korea Republic of MoldovaRomaniaRwandaRussian FederationSaint LuciaSaint Vincent and the Grenadines San MarinoSao Tomé e PrincipeSenegalSerbiaSeychellesSierra 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

146 PCT States

Countries not yet in PCTAfghanistanAndorraArgentinaBahamasBangladeshBhutanBoliviaBurundiCambodiaCape VerdeDemocratic Republic of

CongoDjiboutiEritreaEthiopiaFijiGuyanaHaitiIran (Islamic Republic of)

IraqJamaicaJordanKiribatiKuwaitLebanonMaldivesMarshall IslandsMauritiusMicronesiaMyanmarNauruNepalPakistanPalauParaguaySamoaSaudi ArabiaSolomon Islands

SomaliaSouth SudanSurinameTimor-LesteTongaTuvaluUruguayVanuatuVenezuelaYemen(47)

Recent/future PCT developments

PCT Assembly 2012 outcomes

Indication of availability for license3rd Party Observation systemePCTCollaborative searchAIA Simplification for PCTPCT-PPHWIPO AMC fee reduction for PCT usersNon-PCT WIPO Assemblies outcomes

PCT Assembly 2012 Outcomes

AIA-related PCT Regulation amendments agreed Entry into force January 1, 2013, applying to PCT applications

with an international filing date on or after that date

National Institute of Industrial Property of Chile appointed as PCT ISA and IPEA

IB, Authorities and national offices invited to increase efforts to raise awareness of and promote supplementary international search, and Authorities not yet offering it to reconsider in the near future

Availability for licenseUse is beginning: as of last week had 64 applications in relation to which this indication has been made

Mostly appear to be from universities and research institutions, but also from individuals

As of January 1, 2012, PCT applicants can indicate in relation to their published applications that the invention is available for license How? Applicants should submit a “licensing request” (see Form

PCT/IB/382) directly to the IB 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) and such requests may be revoked by the applicant at any time, that is, also after 30 months from the priority date

Third Party Observations (1)Available from July 2, 2012

System to allow third parties to draw attention to prior art which is relevant to novelty and inventive step which may have a bearing on ultimate patentability Goal: give national offices (and PCT Authorities) better/more

complete information on which to base their decisions, in furtherance of overall patent quality

Web-based system accessible either via qualifying applications in PATENTSCOPE, or via logging into public ePCT and furnishing IA number of published application

Free of charge

Third Party Observations (2)

Experience thus far: No deluge yet, nor any campaigns yet against particular technologies Everything received so far has been very professional

18 observations from a variety of countries most in English, a few in German All but 1 anonymous None have been rejected for abuse of the system All have included copies of citations, whether patent or non-patent literature

(slightly more non-patent literature than patent documents)

User feedback so far has been: glad to have opportunity easy to use if you already have a WIPO account 500 characters is not enough to give a meaningful explanation of why you

think a document is relevant, especially if the invention has a lot of claims 

ePCTRecently released October 2012 version which additionally provides for: Request withdrawal of designations Request withdrawal of priority claim(s) Post-filing requests to the IB to retrieve a priority document from

DAS Post-filing requests to RO/IB to make available to DAS an

international application filed at RO/IB For international applications with an international filing date on or

after 16 September 2012, prepare and submit post-filing a Declaration of Inventorship under Rule 4.17(iv) with the updated wording following entry into force of the America Invents Act

Improved online Action for Rule 92bis change requests: new method for indicating specific designations for applicants and/or inventors

Coming soon: Online web filing of new international applications: pilot with RO/IB

WIPO’s position: collaborative search should be part of the future of the PCTPCT past discussions PCT Collaborative Search (and Examination) were important

elements of initial “PCT Roadmap” proposal presented at the 2009 PCT WG

Most recent status reports at 2012 PCT MIA (PCT/MIA/19/4) and 2012 PCT WG (PCT/WG/5/9)

2nd IP5 pilot—prelimary views of EPO (as example) In 87% of cases, feedback from USPTO and KIPO examiners

resulted in addition of citations to ISR, and in 27% resulted in amendments to WO-ISA

In 92% of cases, lead examiner (EPO) perceived the final products (ISR and WO-ISA) improved as a result of collaboration; in more than 1/3 of cases, significant improvement

In 70% of cases, EPO examiners (as peer examiners) would trust both search and exam results produced collaboratively

In 30% of cases, complementary examination would be required at EPO due to differences in patent law (e.g., medical use, method of treatment, etc.)

Collaborative PCT Search

AIA Simplification for PCTImplications for the PCT system as from 16 September 2012: PCT applications can be filed in the name of a corporate applicant

for all States, including the US Only declarations of inventorship (Rule 4.17(iv)) complying with the

new standardized wording (see newly modified Section 214 of the AIs) will be accepted by DO/US Applicants who use the old standardized wording for the declaration of

inventorship for international applications filed on or after 16 September 2012 will receive an invitation to correct from the IB (Form PCT/IB/370)

The request form (PCT/RO/101) has been modified accordingly, and electronic filing software (PCT-SAFE) update has been issued

Applicants who, on or after 16 September 2012, continue to indicate inventors as applicants for the US only in the request form will receive a notice from the RO (PCT/RO/132) or the IB (PCT/IB/345) informing them about the possibility to submit a request for the recording of a change under Rule 92bis

PCT-PPH

32 PCT-PPH agreements between offices around the world

Information on the PCT Website: http://www.wipo.int/pct/en/filing/pct_pph.html

PCT and AMCAMC=WIPO Arbitration and Mediation Center As of June 1, 2012, AMC is offering a 25% reduction in the

Center’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

Type of fee Amount in dispute

Expedited Arbitration

Arbitration

Registration fee

Any amount USD 1,000 USD 2,000

Administration fee

Up to 2.5M USD 1,000 USD 2,000

Over 2.5M and up to 10M

USD 5,000 USD 10,000

Over 10M USD 5,000 +0.05% of amount over $10M up to a maximum fee of $15,000

USD 10,000

+0.05% of amount over $10M up to a maximum fee of $25,000

Type of fee Mediation

Administration fee 0.10% of the value of the mediation, subject to a maximum of USD 10,000

Non-PCT WIPO Assemblies Outcomes--2012

Expressed desire to see business/industry included somehow in future WIPO Assemblies meetingsDesire by member States for more WIPO external officesMovement in the normative program VIP—Oct. & Nov. meetings, Dec. Assembly with aim of June 2013

DipCon IGC—1 year Roadmap to decision as to potential DipCon Design Law Treaty—expedited work with nominal plan for 2014

DipCon Broadcasters Treaty—also planned DipCon 2014

Prospect for expansion of Madrid and Hague membership/usageDiscussion of potential postponement of upcoming SCP