Introduction to the Patent Cooperation Treaty (PCT) Bangkok January 2012

Transcription

1 Introduction to the Patent Cooperation Treaty (PCT) Bangkok January 2012 Patricia Simao Sartorius, Program Officer, ITTS, Patent Division, WIPO

2 Using the traditional patent system to seek multinational patent protection (months) 0 12 File application locally File applications abroad Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: - multiple formality requirements - multiple searches - multiple publications - multiple examinations and prosecutions of applications - translations and national fees required at 12 months Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI

3 The PCT System --typical use, in more detail Enter national phase (months) publication File local application Typically a national patent application in the home country of the applicant File PCT application search report & written opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability

4 The PCT System --typical use, in more detail Enter national phase (months) publication File local application File PCT application Typically filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States search report & written opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability

5 The PCT System --typical use, in more detail Enter national phase (months) publication File local application File PCT application search report & written opinion Report on state of the art (prior art documents and their relevance) + initial patentability opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability

6 PCT Searching Authorities The ISAs are the following 17 offices: Australia Austria Brazil Canada China Egypt (not yet operating) Finland India (not yet operating) Israel (not yet operating) Japan Republic of Korea Russian Federation Spain Sweden United States of America European Patent Office Nordic Patent Institute

7 The PCT System --typical use, in more detail Disclosing to world content of application in standardized way Enter national phase (months) publication File local application File PCT application search report & written opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability

8 The PCT System --typical use, in more detail Enter national phase (months) publication File local application File PCT application search report & written opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability Request an additional patentability analysis on basis of amended application

9 The PCT System --typical use, in more detail Enter national phase (months) publication File local application File PCT application search report & written opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability Additional patentability analysis, designed to assist in national phase decisionmaking

10 The PCT System --typical use, in more detail Express intention and take steps to pursue to grant in various states Enter national phase (months) publication File local application File PCT application search report & written opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability

11 The PCT System (optional) Supplementary international search report (months) publication File local application File PCT application search report & written opinion (optional) Request for supplementary international search (optional) File demand for preliminary examination (optional) preliminary report on patentability

12 144 PCT States =PCT Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Cameroon Canada Central African Republic Chad Chile China Colombia Comoros Congo Costa Rica Côte d'ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Denmark Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland France, Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea-Bissau Honduras Hungary Iceland India Indonesia Ireland Israel Italy Japan Kazakhstan Kenya Kyrgyzstan Lao People s Dem Rep. Latvia Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Madagascar Malawi Malaysia Mali Malta Mauritania Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands New Zealand Nicaragua Niger Nigeria Norway Oman Papua New Guinea Peru Philippines Poland Portugal Qatar Republic of Korea Republic of Moldova Romania Rwanda Russian Federation Saint Lucia Saint Vincent and the Grenadines San Marino Sao Tomé e Principe Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Swaziland St. Kitts and Nevis Sweden Switzerland Syrian Arab Republic Tajikistan Thailand The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United Republic of Tanzania United States of America Uzbekistan Viet Nam Zambia Zimbabwe

13 PCT Statistics Overall +5.7% in 2010 All-time record of 164,300 applications

14 2 million PCT applications April 14, 2011: event marking the filing of the 2 millionth PCT application 2,000,000 1,800,000 1,600,000 1,400,000 1,200,000 1,000, , , , ,

15 applications received in 2010 by country of origin 45,000 40,000 35,000 30,000 25,000 US: -1.6% JP: +8% DE: +4.5% KR: +20.3% CN: +55.6% IN: +36.6% 2010: the year East Asia overtook North America and Western Europe to become the subregion accounting for most PCT filings 20,000 15,000 10,000 5,000 0 US JP DE CN KR FR GB NL CH SE CA IT FI AU ES

16 applications received in 2010 by country of origin (cont.) 1,600 1,400 1,200 1, IL DK BE NO BR IE NZ LU MX SI UA CL SA LI

17 PCT Applications by Field of Technology (2010) Electrical Instruments Chemistry Mechanical Other

18 Highest filing technical areas (2010) Civil eng. Basic materials chem Digital comms Biotech Transport Med. tech. Organic chem Semiconductors Computer tech. Telecomms Electrical mach. Measurement Pharma.

19 WIPO: main sources of revenue 15% 1% 2% 6% Member States PCT System Madrid Sytem Hague System Other 76% Budget : CHF 618 million (decrease of 1.6% (9.8m) on 08-09)

20 Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which 1. postpones the major costs associated with internationalizing a patent application

21 Traditional (months) Traditional patent system 0 12 File local application Fees for: --translations --Office fees --local agents vs. PCT system File applications abroad Fees for: --translations --Office fees --local agents (months) PCT 0 publication Enter national phase File local application File PCT application search report & written opinion (optional) File demand for preliminary examination (optional) preliminary report on patentability

22 Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which 1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions

23 Example: PCT Search Report Symbols indicating which aspect of patentability the document cited is relevant to (for example, novelty, inventive step, etc.) Documents relevant to whether or not your invention may be patentable The claim numbers in your application to which the document is relevant

24 Example: PCT Written opinion of the Searching Authority Reasoning supporting the assessment Patentability assessment of claims

25 Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which 1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions 3. harmonizes formal requirements

26 Harmonization of formal requirements PCT Article 27(1): No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and Regulations. PCT Applicant s Guide, paragraph 4.011: There is a prescribed form for the international application. This form must be accepted by all designated Offices for the purposes of the national phase, so that there is no need to comply with a great variety of widely differing formal requirements in the many countries in which protection may be sought.

27 Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which 1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions 3. harmonizes formal requirements 4. protects applicant from certain inadvertent errors

28 Protection from inadvertent errors invited corrections of defects & fee payments non-competent receiving Office double formality review restoration of priority missing parts rectification of obvious mistakes excuse of national phase entry delay

29 Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which 1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions 3. harmonizes formal requirements 4. protects applicant from certain inadvertent errors 5. evolves to meet stakeholder needs

30 PCT Meetings (1) Meeting of Authorities annual (usually first quarter) (2) PCT Working Group annual (usually second quarter) (3) PCT Assembly September/October (4) Conferences for example: PCT China Beijing, December 2007 PCT Asia Singapore, April 2008 PCT for the Americas Miami, November 2008 WIPO/OEPM Seminar on the PCT for Latin American countries Mexico City, December 8 to 10, 2010 (5) Constant contact with PCT users

31 Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which 1. postpones the major costs associated with internationalizing a patent application 2. provides a strong basis for patenting decisions 3. harmonizes formal requirements 4. protects applicant from certain inadvertent errors 5. evolves to meet user needs 6. is used by the world s major corporations, universities and research institutions when they seek international patent protection

32 Top PCT Applicants Panasonic JP (2154) 2. ZTE Corporation CN (1868) 3. Qualcomm US (1677) 4. Huawei CN (1528) 5. Philips NL (1435) 6. Bosch DE (1301) 7. LG Electronics KR (1298) 8. Sharp JP (1286) 9. Ericsson SE (1149) 10. NEC JP (1106) 11. Toyota JP (1095) 12. Siemens DE (833) 13. BASF DE (818) 14. Mitsubishi Electric JP (726) 15. Nokia FI (632) 16. 3M US (586) 17. Samsung Electronics KR (578) 18. HP US (564) 19. Fujitsu JP (476) 20. Microsoft US (469)

33 PCT Challenges (1) Trying to keep PCT from being politicized like other parts of WIPO s work Quality of international work products Building trust between patent offices, so duplicative international phase and national phase processing can be reduced Language issues Developing countries ( how can we realistically benefit from PCT? ) Top 15 countries responsible for 92.1% of IAs published in 2009 Top 32 countries filed 96% of IAs in 2009 The other 4% of filings are spread across 110 countries

34 PCT Challenges (2) Making PCT accessible to applicants of all types from all Contracting States (for example, SMEs) Helping PCT users stay abreast of new developments and strategies Unscrupulous companies/individuals who want to mislead PCT applicants into paying unrelated and unnecessary fees

35 WARNING: Requests for Payment of Fees applicants and agents are continuing to receive invitations to pay fees that do not come from the Bureau of WIPO and are unrelated to the processing of international applications under the PCT. Whatever registration services might be offered in such invitations, they bear no connection to WIPO or to any of its official publications.

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40 Recent and future PCT developments "PCT Roadmap" quality initiatives Work with ISAs to improve quality of ISR/WO Implement third party observation system Cooperate with IP5 on collaborative search Improving the PCT user experience Encouraging Offices to withdraw incompatibilities epct: secure file inspection system + further services Indication of availability for license Improvements to PCT-related Infrastructure facilitating sharing of national, regional and international reports increase in PATENTSCOPE coverage, as well as new features and contents

41 PCT training options PCT Distance learning course content available in the 10 PCT publication languages PCT Webinars providing free updates on developments in PCT procedures upon request also for companies or law firms PCT Seminars and training sessions (in person)

42 Where to get help For further information about the PCT, see For general questions about the PCT, contact the PCT Information Service at: Telephone: (+41-22) Facsimile: (+41-22)