PCT Update 2015

November 12, 2015

Mr. Quan-Ling Sim

PCT Outreach and User Relations Section

Outline
Membership and statistical update 2014
Decisions of the PCT Assembly October 2015
ePCT
Certain PCT features and other matters
Future development of the PCT System
Information and training

Membership and statistical update

PCT Contracting States (148)

Countries not yet PCT Contracting

States
Afghanistan
Andorra
Argentina
Bahamas
Bangladesh
Bhutan
Bolivia
Burundi
Cambodia
Cape Verde
Democratic Republic of Congo
Djibouti
Eritrea
Ethiopia
Fiji
Guyana

Haiti
Iraq
Jamaica
Jordan
Kiribati
Kuwait
Lebanon
Maldives
Marshall Islands
Mauritius
Micronesia
Myanmar
Nauru
Nepal
Pakistan
Palau

Paraguay
Samoa
Solomon Islands
Somalia
South Sudan
Suriname
Timor-Leste
Tonga
Tuvalu
Uruguay
Vanuatu
Venezuela
Yemen
(45)

ISA/IPEA status (1)

Twenty one (21) Offices currently hold the status as an
ISA/IPEA
Singapore started operating as an ISA, SISA, and IPEA
as from 1 September 2015
Supplementary search fee: CHF 1,571
Accepted languages: English and Chinese
Scope of documentation: PCT minimum
documentation, and at least the documents in English
and Chinese held in its search collection

ISA/IPEA status (2)

The Visegrad Patent Institute (VPI) was appointed by the
PCT Assembly in October 2015
Czech Republic, Hungary, Poland, Slovakia
Notional commencement date of 1 July 2016
Ukraine (appointed in 2013) not yet operational

PCT Applications (2014)

250000

214,500 applications
4.5 % increase over 2013

200000

150000

100000

50000

0
78

80

82

84

86

88

90

92

94

96

98

00

02

04

06

08

10

12

14

Filings by country of origin (2014)

70000

Examples of increases in
certain national Offices

60000

CN: +18.7 %
US: +7.1 %
UK: +9 %

50000

40000

30000

20000

10000

0
US

JP

CN

DE

KR

FR

GB

NL

CH

SE

10

Fields of technology (2014)

Electrical Engineering

Electrical Engineering; 73865

Chemistry

Chemistry; 47064

Mechanical Engineering

Mechanical Engineering; 40553

Instruments

Instruments; 33937

Other fields

Other fields; 14208

0

20000

40000

PCT applications

60000

80000

11

Top PCT Applicants (2014)

1. Huawei (CN) 3442

11. Samsung (KR) 1381

2. Qualcomm (US) 2409

12. Toyota (JP) 1378

3. ZTE (CN) 2179

13. Bosch (DE) 1371

4. Panasonic (JP) 1682

14. Sharp (JP) 1227

5. Mitsubishi Electric (JP) 1593

15. NEC (JP) 1215

6. Intel (US) 1539

16. LG Electronics (KR) 1138

7. Ericsson (SE) 1512

17. Shenzhen (CN) 1086

8. Microsoft (US) 1460

18. Fujifilm (JP) 1072

9. Siemens (DE) 1399

19. United Technologies (US) 1013

10. Philips (NL) 1391

20. Hitachi (JP) 996

PCT Union Assembly

October 5-14, 2015

13

Entry into force on 1 July 2016

Request by applicants to omit confidential and private
information
Transmittal by the receiving Office to the International
Bureau of documents supporting requests for the
restoration of the right of priority
Force majeure for generalized IT failures
Languages of correspondence in ePCT to include all ten
publication languages

14

Entry into force on 1 July 2017

Receiving Offices to forward earlier search and/or
classification results to the ISA
Designated Offices to send timely information to the IB
concerning national phase entries, national publications,
and grants (Offices encouraged to comply earlier if
possible)

15

Other decisions
Took note of a report on the review of the Supplementary
International Search system; next review in 2020
Deferred discussion on currency hedging to guard
against loss of income
http://
www.wipo.int/meetings/en/details.jsp?meeting_id=36343

ePCT for Applicants

17

ePCT (1)
The global portal for managing PCT applications
ePCT private services
Full suite of functions with authenticated access
Login with WIPO user account and digital certificate
Management of secure access rights between
associates
Online access to PCT applications
Actions to conduct PCT transactions
Web filing (ePCT-Filing) with participating receiving
Offices including RO/IB

18

ePCT public services (2)

Create a WIPO User Account using the WIPO Accounts
service
https://pct.wipo.int/wipoaccounts/ePCT/public/register.jsf
Documents (PDF format) can be uploaded to the IB for all
PCT applications held in the IBs electronic system a
practical alternative to fax and paper; e-mail should NOT be
used for submitting documents
User Guide for Document Upload available
http://www.wipo.int/export/sites/www/pct/en/epct/pdf/tran
sition__to_epct_for_document_upload.pdf

19

ePCT private services (3)

http://pct.wipo.int/epct
Obtain/Upload a supported certificate for additional
authentication
WIPO digital certificate
EPO digital certificate (smart card)
JP SECOM digital certificate
Note: USPTO digital certificates are NOT supported

20

ePCT best practices (4)

Use ePCT private services
Digital certificates for authentication are available
free-of-charge from WIPO
Use Actions to conduct transactions such as Rule 92bis
changes, filing of Chapter II demands, Article 19
amendments, etc.
Prepare documents electronically and sign them using a
text string signature, e.g., / John Smith /
Print to PDF and submit file in ePCT

21

Future developments (5)

Progressive extension of ePCT-Filing to other
receiving Offices
Support alternative filing methods in ePCT-Filing,
e.g., download package
Extension of online payment function to other types of
fees post-filing
Template in ePCT public services for preparing
requests under Rule 92bis

Certain PCT features and other

matters

23

WIPO Pearl
Launched in September 2014
Multilingual terminology portal which gives access to scientific
and technical terms derived from patent documents
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

24

Third Party Observations

Online system that allows third parties to submit and
characterize prior art relevant to novelty and inventive
step
Limited to the international phase
Length of text permitted for observations has been
increased
Additional arguments may be uploaded as PDF
documents, e.g., where formulae are required
Submissions possible until the expiration of 28 months
from the priority date

25

Licensing
Upon request, PCT applications may be highlighted as
being available for license on PATENTSCOPE
On-line action in ePCT
Form PCT/IB/382
Can be submitted at any time prior to the expiration of 30
months from the priority date
Effective means of advertising and identifying potential
licensees
Free of charge

26

Supplementary International Search

Optional feature of the PCT System
Performed by a different International Authority
Useful for searches in different language collections
In some instances, can also be used to search subject
matter not searched by the original International
Searching Authority, e.g., methods of medical treatment
Service provided by AT, EP, FI, RU,SE, SG and XN

27

PCT-PPH
Accelerated national phase processing on the basis of a
positive PCT product
Introduction of Global Patent Prosecution Highway
(PPH) pilot in January 2014
Single set of qualifying requirements that simplifies
the existing PPH network so that it is more accessible
to users
Includes PCT work products
Links
http://www.wipo.int/pct/en/filing/pct_pph.html
http://www.jpo.go.jp/ppph-portal/index.htm

28

PCT Direct (1)

New service offered by the
EPO since 1 November 2014, and
Israel Patent Office (ILPO) since 1 April 2015
During the PCT procedure, applicants can address
patentability issues raised in the search opinion established
by the EPO or ILPO for the priority application

29

PCT Direct (2)

Aims at improving the efficiency and quality of the
procedure before the ISA by allowing the applicant to file
informal comments on the earlier search
Further details can be found on the EPO website:
http://
www.epo.org/law-practice/legal-texts/official-journal/201
4/09/a89.html
Further details can be found on the ILPO website:
http://
index.justice.gov.il/En/Units/ILPO/Departments/PCT/N
ews/Pages/PCTDirect.aspx

30

Misleading WIPO Invitations

WIPO has issued warnings regarding misleading
invitations for payment of fees
Be vigilant and dont be deceived by invitations which
look similar to those issued by WIPO
Bring to the attention of WIPO and to consumer
protection authorities instances of misleading invitations
Examples of such misleading invitations can be viewed
on our website at the following link: http
://www.wipo.int/pct/en/warning/pct_warning.html

31

Arbitration and Mediation Center Fee

Reductions
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)
25% lifetime reduction on AMCs registration and
administration fees where at least one party to the
dispute has been named as an application or inventor in
a published PCT application (no relationship to the
dispute is required)
Fee calculator
http://www.wipo.int/amc/en/calculator/adr.jsp

Future developments of the

PCT system

33

PCT Working Group

Technical committee that meets on an annual basis
Discusses a range of policy, operational, and legal
matters
Some of the work results in proposals to amend the PCT
Regulations which are submitted to the PCT Assembly
for decision

34

Examples of matters considered by the

PCT Working Group
Agenda of May 2015 meeting
23 documents, available in the 6 official UN languages
http://
www.wipo.int/meetings/en/details.jsp?meeting_id=35593
Summary by the Chair:
http://www.wipo.int/edocs/mdocs/pct/en/pct_wg_8/pct_wg_
8_25.pdf

Information and training

36

PCT information and training

PCT Highlights http://www.wipo.int/pct/en/highlights/index.html
PCT Newsletter http://www.wipo.int/pct/en/newslett/
Learn the PCT videos http://www.wipo.int/pct/en/training/index.html
PCT Distance Learning Course in all ten PCT languages
http://www.wipo.int/pct/en/distance_learning/index.html

PCT Webinars http://www.wipo.int/pct/en/seminar/webinars/index.html

Free updates on developments in PCT procedures
Available on request for companies or law firms
On-site PCT seminars and training sessions
Annual advanced PCT seminar at WIPO in October

37

Need more information?

PCT Resources
http://www.wipo.int/pct/en/
PCT Information Service
Telephone: (+41-22) 338 83 38
Facsimile: (+41-22) 338 83 39
E-mail: pct.infoline@wipo.int

38

Recording and Survey

Todays webinar and slides will be available for download
from the PCT webinar page over the next few days:
http://www.wipo.int/pct/en/seminar/webinars/index.html

Survey on todays webinar presentation