Update on the latest PCT Developments

Transcription

1 Topic 1: Update on the latest PCT Developments I 3 PM, Annual General Meeting 2017 WIPO HQ, Geneva September 21, 2017 Speaker: Christine Bonvallet, Senior Legal Officer, PCT Legal Division I 3 PM Annual Meeting-1

2 Overview PCT Contracting States and Yearly statistics Recent PCT Rule changes and PCT developments I 3 PM Annual Meeting-2 Amendments to the PCT Regulations as from 1 July 2017 Not so recent (anymore) PCT features Licensing Availability Third Party Observations PCT Direct PATENTSCOPE & WIPO PEARL PCT-PPH epct look and feel for epct launched in March 2017

3 PCT Coverage: 152 States =PCT Recent accessions: Kuwait KW Djibouti DJ Cambodia KH Jordan JO Albania Algeria Angola Antigua and Barbuda Armenia Australia Austria Azerbaijan Bahrain Barbados Belarus Belgium Belize Benin Bosnia and Herzegovina Botswana Brazil Brunei Darussalam Bulgaria Burkina Faso Cambodia 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 Djibouti 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 Iran (Islamic Republic of) Ireland Israel Italy Japan Jordan Kazakhstan Kenya Kuwait 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 Panama 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 Saudi Arabia 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

4 UN Member States not yet in PCT Afghanistan Andorra* Argentina** Bahamas Bangladesh Bhutan Bolivia Burundi Cape Verde Democratic Republic of Congo Eritrea Ethiopia Fiji Guyana Haiti Iraq Jamaica Kiribati 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 (41) *preparing to accede **PCT discussions ongoing

5 PCT Applications : 1 millionth : 2 millionth : 3 millionth

6 International applications filed in : 233,000 I 3 PM Annual Meeting-6

7 International applications filed in 2016 by country of origin I 3 PM Annual Meeting-7

8 International applications filed in 2016 by region I 3 PM Annual Meeting-8

9 Recent PCT Rule changes and PCT developments

10 PCT Rule Changes (1) Amendment to PCT Rules 12bis, 23bis and 41 I 3 PM Annual Meeting-10 Transmittal of earlier search and/or classification results by ROs to ISAs General Rule: ROs forward the search/classification results from priority applications without the applicant s express permission Exception: ROs which have notified the IB of incompatibility of such forwarding with applicable national law will only forward earlier search and classification results to the ISA if the applicant expressly authorized the RO by checking the appropriate box on the request form (concerns the receiving Offices: AU, CH, CZ, FI, HU, IL, JP, NO, SE, SG and US)* (*item 2.3 in the request form) Even in cases in which an RO in principle applies the procedure above, they may allow applicants to request, at the time of filing of the PCT application, to not have the earlier search results forwarded to the ISA, if the RO notified the IB accordingly (applicants filing with RO/DE, RO/FI or RO/SE)** (**item 2.2 in the request form) Effective as from 1 July 2017 for applications filed on or after that date

11 PCT Rule Changes (2) Amendment to PCT Rule 45bis.1 Extension of the deadline for requesting supplementary international search from 19 to 22 months from the priority date Effective for international applications in respect of which the 19-month time limit for filing a supplementary search request has not yet expired on July 1, 2017 I 3 PM Annual Meeting-11

12 PCT Rule Changes (3) Amendment to PCT Rules 86 and 95 Obligation for designated Offices to timely send national phase entry and related data to the IB (complements the existing national phase data already provided by a number of offices) Data required to be transmitted: Date national phase entered National application number Number and date of national publication Date of grant, and number and date of national publication as granted Time limit for reporting: 2 months from event (or as soon as reasonably possible thereafter) Objective: visibility of the status of PCT application during the national phase on PATENTSCOPE under the National phase tab Effective as from 1 July 2017 for applications in respect of which the acts referred to in Article 22 or Article 39 are performed on or after that date I 3 PM Annual Meeting-12

13 2017 PCT Assembly To be decided: Reappointment of all ISAs/IPEAs Appointment of new ISA/IPEA Philippines IPO Amendments to Regulations Schedule of Fees to make clear that the 90 per cent fee reductions in item 5 are intended only for persons filing an international application in their own right and not those filing an international application on behalf of a person or entity which is not eligible for the reduction, such as a director or employee of a company filing an international application on behalf of a company in order to obtain the reduction in item 5(a) Understanding of the Assembly to be adopted: It is the understanding of the PCT Assembly that the fee reduction in item 5 of the Schedule of Fees is intended to apply only in the case where the applicants indicated in the request are the sole and true owners of the application and under no obligation to assign, grant, convey or license the rights in the invention to another party which is not eligible for the fee reduction. Correction of Rule references in Rules 4 and 41 Proposed for entry into force July 1, 2018, with Assembly understanding being adopted at I 3 PM Annual Meeting-13 closing of Assemblies

14 Not so recent (anymore) PCT features Licensing Availability Third party Observations PCT Direct

15 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: I 3 PM Annual Meeting-15 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)

16 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 I 3 PM Annual Meeting-16 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

17 Third Party Observations Main Features (1) Available since July 2012 (5-year anniversary) Allows 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 I 3 PM Annual Meeting-17

18 Third Party Observations Main Features (2) 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 I 3 PM Annual Meeting-18

19 Third Party Observations Role of the International Bureau 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 International Bureau receives just over 1 per working day I 3 PM Annual Meeting-19

20 Third Party Observations 5 Years - Facts and Figures (1) In 5 years: 1,422 observations on 1,394 international applications just over 1 observation per working day Third party observations on 0.15% of international applications 78 % of all observations were made anonymously Up to 3 observations per international application (3 in 3 cases) I 3 PM Annual Meeting-20

21 PCT Direct (1) Recent service offered by the EPO since 1 November 2014, and Israel Patent Office (ILPO) since 1 April 2014 During the PCT procedure, applicants can address patentability issues raised in the search opinion established by for the priority application by the same office Aims at improving the efficiency and quality of the procedure before the ISA I 3 PM Annual Meeting-21

22 PCT Direct (2) Requirements: the informal comments are filed together with the PCT application with any RO if ISA/EP is chosen with RO/IL if ISA/IL; EPO or ILPO is selected as ISA; the PCT application claims priority of an earlier application searched by ILPO Form: the EPO (European first filing or national first filing) 1 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) I 3 PM Annual Meeting-22 1) The EPO performs national searches for France, Netherlands, Belgium, Luxembourg, Italy, Turkey, Greece, Cyprus, Malta, San Marino, Lithuania, Latvia and Monaco

23 PATENTSCOPE WIPO PEARL

24 PATENTSCOPE (1) Interface available in 10 languages (plus mobile version) Document tab updated to include: Search and Examination- Related Documents The new section is intended to help users interested in assessing the likely patentability of the claimed invention by bringing together all available search and examination-related documents, including the ISR, search strategies, written opinions, IPRPs, English translations of reports and opinions, and third party observations, to the extent that they have been received or prepared by the International Bureau I 3 PM Annual Meeting-24

25 PATENTSCOPE (2) Information on national phase entry for more than 50 countries Access to more than 40 searchable national and regional patent collections New secure access to PATENSCOPE (via the secure http protocol https) Cross-Lingual Information Retrieval (CLIR) (Cross Lingual Information Retrieval) allows the search of a term/phrase and its variants in several languages by entering the term(s) in one language; the system will suggest variants and translate the term/s, allowing the search of patent documents in other languages New video tutorials: Webinars: I 3 PM Annual Meeting-25

26 WIPO Pearl (1) Launched in September 2014 Multilingual terminology portal which gives access to scientific and technical terms derived from patent documents Helps to promote accurate and consistent use of terms across different languages and makes it easier to search and share scientific and technical knowledge Available in all ten PCT languages (English, French, German, Spanish, Russian, Arabic and Japanese, Korean and Portuguese) All content validated with reliability scores Integrated with PATENTSCOPE Further details can be found at: I 3 PM Annual Meeting-26

27 WIPO Pearl (2) I 3 PM Annual Meeting-27

28 PCT-PPH

29 What is the Patent Prosecution Highway (PPH)? The Patent Prosecution Highway (PPH) is a framework in which an application whose claims have been determined to be patentable in the Office of First Filing (OFF) [or Office of Earlier Examination (OEE)] can have an accelerated examination in the Office of Second Filing (OSF) [or Office of Later Examination (OLE)] OFF/OEE Application A Claim B Patentable OSF/OLE Application A Claim B PPH request Accelerated Examination Claim B sufficiently corresponds to Claim B I 3 PM Annual Meeting-29

30 Aims of the PPH By exploitation of search/examination information of the Office of First Filing/Office of Earlier Examination, the PPH: supports applicants in their efforts to obtain stable patent rights efficiently around the world, and reduces the search/examination burden and improves the quality of examination of major patent offices in the world. I 3 PM Annual Meeting-30 Source: PPH Portal Site

31 PCT Timeline: from bilateral to plurilateral agreements to PCT integration? Traditional PPH: bilateral agreements: request to OSF based on claims found acceptable by OFF I 3 PM Annual Meeting-31 PCT-PPH : PPH request can be based on a positive PCT work product of a PCT application PPH MOTTAINAI or PPH 2.0: PPH request based on patent application filed with any Office that has examined the application : OEE OFF IP5 PPH: Plurilateral agreements: PPH request at IP5 Office based on work products of national OR PCT applications issues by any of the IP5 Offices (EPO, JPO, KIPO, SIPO, USPTO) Global PPH: Plurilateral agreements PPH request can be made to any of the participating Offices

32 PPH Network in participating Offices (including 18 PCT International Authorities) as of July 6, 2017 Full table of who offers what available at I 3 PM Annual Meeting-32

33 Global PPH Network 24 participating Offices (including 13 PCT International Authorities) as of July 6, 2017 I 3 PM Annual Meeting-33

34 Total use of PPH 130,761 PPH requests (PPH and PCT-PPH) were received up to end December 2016 " Offices of Earlier Examination (OEE): " JPO (53,229 requests) " USPTO (39,554 requests) " EPO (14,318 requests) " KIPO (11,449 requests) " SIPO (4,033 requests) " Offices of Later Examination (OLE): " USPTO (42,843 requests) " SIPO (19,833 requests) " JPO (18,310 requests) " KIPO (13,935 requests) " CIPO (10,915 requests) " EPO (8,405 requests) Source: I 3 PM Annual Meeting-34

35 PPH Requests between OEE and OLE in 2016 " Main OEE/OLE pairs: " JP US (18,060 requests) " JP CN (9,727 requests [*2,630 PCT-PPH = 26%]) " JP EP (4,430 requests [*1,583 PCT-PPH] = 36%]) " EP CN (1,758 requests [*1,282 PCT-PPH] = 73%]) " EP JP (2,759 requests [*2,071 PCT-PPH]) = 75%]) " EP US (8,189 requests) " US CN (6,243 requests [*192 PCT-PPH] = 3%]) " US CA (8,729 requests [*223 PCT-PPH] = 2.5%]) " US JP (7,339 requests [*104 PCT-PPH] = 1.4%]) Source: I 3 PM Annual Meeting-35

36 Aims of the PCT To simplify and render more economical the obtaining of protection for inventions where protection is sought in several countries (preamble to the PCT): providing a filing tool for applicants for foreign patent filings, and making available a tool for effective processing of patent applications by patent offices of PCT Member States willing to exploit work done by others. I 3 PM Annual Meeting-36

37 Original Relationship between PCT and PPH OFF application Priority claim Patentable claim(s) or Grant OSF DO* application Request for PPH PCT application Positive ISR/ WO-ISA OSF DO* application OSF DO* application I 3 PM Annual Meeting-37 " PCT used as a vehicle : " to get application from OFF to OSF " to take advantage of benefits of PCT, centralized filing and publication, and the 30 months before national phase entry " No possibility to use PCT work products as basis for PPH request

38 Current Relationship between PCT and PPH " PCT-PPH a useful add-on to the PCT procedure " 35% of PPH requests in 2015 were PCT-PPH " Benefits for both PPH and PCT: I 3 PM Annual Meeting-38 " PPH benefits from PCT timelines and timeliness of international work products " PCT benefits from additional incentive for applicants and offices to use the PCT System in a way that is beneficial to all: " high quality initial filing for increased chance of positive written opinion / IPRP(Chapter I) " use of Chapter II focus on fewer, higher quality claims; quality and efficiency gains

39 Integrating the PCT into the PPH: PCT-PPH (step 1) OFF application Priority claim PCT application OSF DO* application OSF DO* application Request for PPH Positive ISR/ WO-ISA OSF DO* application " PPH request can be based on a positive written opinion or positive international preliminary report on patentability (under Chapter I or II) " 16 International Authorities take part as ISA/IPEA " 35 designated/elected Offices accept international work products from at least one ISA/IPEA I 3 PM Annual Meeting-39

40 Integrating the PPH into the PCT further (1) Proposal by UK and US to PCT Working Group in 2013 and 2014 (Circular C.PCT 1364) Expedited processing of national phase applications would be available for all designated/elected Offices (as detailed in proposed new Rules 52bis and 78bis) equal opportunity for accelerated processing Conditions: at start of national phase processing, application must contain only claims considered as allowable in the PCT Work Products (i.e. WO of the ISA or IPEA or IPRP Chapter II) = national claims sufficiently correspond to the claims considered as meeting the criteria set forth in PCT Article 33(2) (4) [novelty, non-obviousness and industrial applicability] Discussions ongoing I 3 PM Annual Meeting-40

41 Integrating the PPH into the PCT further (2) Issues raised by Member States: opt-out (incompatibility with national laws) or optin (designated office notifies when ready to join) requires offices to accept a PCT-PPH request based on work products from all International Authorities different requirements from Global PPH impact on cost and processing at designated offices legal matters - national sovereignty, TRIPS flexibilities, patent harmonization, implementation by amendment to Regulations or Treaty I 3 PM Annual Meeting-41

42 PCT-PPH Conclusions PPH has grown from a bilateral pilot to a network of 46 Offices and PCT-PPH with more than 27,000 requests per year, and still growing PPH complements the PCT both are based on work sharing, PCT work products can be used as basis for PPH request Further integration between the PPH and PCT possible, but still under discussion Further information on JPO PPH Portal at I 3 PM Annual Meeting-42

43 Thank you for your attention! Christine Bonvallet Senior Legal Officer PCT Legal Affairs Section -- PCT Legal Division Christine.Bonvallet@wipo.int