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PCT recent and future developments
New PCT Contracting State: Saudi Arabia
- Saudi Arabia (SA) became the 147th PCT Contracting State on 3 May 2013. The PCT will enter into force for that State on 3 August 2013.
See also PCT Newsletter, May 2013 [PDF]
ePCT (version 2.8)
- The first web filing of an international application via ePCT was received on 2 May 2013. Initially, ePCT-Filing will only be available to a small, closed pilot group, but it is expected that it will rolled out to all users during the second half of 2013.
- For more about ePCT User Guide [PDF], What’s new in ePCT? [PDF], ePCT FAQs [PDF], and video by PCT user, Carl Oppedahl
- For more about ePCT for Offices and Authorities
PCT Filings in 2012
- In 2012, PCT filings saw continued strong growth; increasing by 6.6%. The top 5 countries of origin for the year were:
– United States (51,207)
– Japan (43,660)
– Germany (18,855)
– China (18,627)
– Republic of Korea (11,848)
See also infographic [PDF], Video and press release
Agreed simplification of PCT Regulations consequential to the America Invents Act
- Inventors are no longer required to be indicated in PCT applications as applicant for the purposes of the US designation (though the USPTO will still require a declaration of inventorship in the US national phase); this was approved by the PCT Assembly in October 2012
- PCT forms (including the request form [PDF]) have been modified to implement this simplification, as well as the PCT Receiving Office Guidelines, and PCT e-filing software, PCT-SAFE
PCT 3rd party observation system now available
Applicants can indicate the availability of an invention for license in PCT applications
- Applicants may highlight their interest in licensing the inventions contained in their international applications on PATENTSCOPE, which can be an effective means of advertising and looking for potential licensees (see PCT Newsletter, December 2011 [PDF])
Collaborative search and examination: second pilot completed by EPO/KIPO/USPTO
- In reply to industry’s request for a single search report and written opinion presenting the views of the examiners of multiple patent offices, the EPO, KIPO and USPTO have completed a second pilot project that examined:
– How collaboration between examiners could be implemented in an operational environment
– The benefits and disadvantages of the collaborative approach in terms of quality and efficiency
See also the report on the second pilot in document PCT/MIA/20/4 [PDF] and the views of the EPO participants in document PCT/WG/5/9 [PDF]
PCT-Patent Prosecution Highway Pilot (PCT-PPH)
- 75 individual PCT-PPH pathways are now in place enabling applicants to request a fast track examination procedure
- 50 per cent of overall PPH is PCT-PPH
- User experience, Carl Oppedahl [YouTube]
Reminders
Meeting of International Authorities (MIA)
- The Summary of MIA, that took place from February 6 to 8, 2013, is now available (PCT/MIA/20 [PDF]).
The PATENTSCOPE search engine
- PATENTSCOPE offers free access to over 18 million patent documents in addition to over 2 million PCT applications
- Contains the national patent data collections of 29 national patent offices, as well as those of the African Regional Intellectual Property Organization (ARIPO), the European Patent Office (EPO) and LATIPAT, a platform that provides patent information in Spanish and Portuguese.
- PATENTSCOPE features a number of powerful tools, including cross-lingual search and machine translation.
- Information on national phase processing of PCT applications is now available for 46 Offices
WIPO GREEN
- WIPO GREEN is a platform that matches owners of environmentally sound technologies (ESTs) with those seeking licensing or partnership agreements. Listing your ESTs in the WIPO GREEN platform is free of charge and offers a practical additional means for seeking potential licensees or partners.
WIPO Arbitration & Mediation Center
- Gives 25% reduction in the registration and administration fees for its alternative dispute resolution (ADR) services where at least one party to the dispute has been named as an applicant or inventor in a published PCT application (PCT Newsletter, June 2012, page 8 [PDF])
Supplementary International Search
- Requesting one or more supplementary international searches (SIS), during the PCT procedure, expands both the linguistic and technical scope of the search [PPT]
- SIS addresses PCT applicants’ concerns about new prior art being found once they have already incurred significant costs and entered the national phase
- Provides extra information in cases where the applicant believes that the commercial value of an invention warrants the additional expense in the international phase
See also the report in document PCT/MIA/20/5 [PDF]
