World Intellectual Property Organization

PCT Brief

The International Patent System

 

PCT recent and future developments 

PCT Filings in 2013

  • In 2013, PCT filings amounted to 205,300 increasing by 5.1%. The United States saw double digit growth and together with China accounted for 56% and 29% of the total PCT growth, respectively. China surpassed Germany to become the third largest user of the system, with Japan as the second-highest user. The United States remains the most-active user of the system. The top 5 countries of origin for the year were:
    – United States (57,239)
    – Japan (43,918)
    – China (21,516)
    – Germany (17,927)
    – Republic of Korea (12,386)
    See infographic PDF, press release, videos: press conference YouTube, highlights YouTube

ePCT-Filing pilot is now open to all users

  • ePCT-Filing pilot offers users a simple, intuitive interface for online filing of international applications:
    – the pilot is now open to filers at the RO/IB, the Austrian Patent Office and the Swedish Patent and Registration Office and it will be progressively extended to include other receiving Offices;
  • ePCT has the best-in-class validation features – all data checks are made against the International Bureau’s database at the time of preparation of the application.
    To access the ePCT system or read more about the new features for applicants PDF and patent Offices PDF.

PCT Assembly (September 23 to October 2, 2013)

  • Approves proposed amendments to the PCT Regulations relating to:
    – mandatory top-up searches (proposed amendment of Rules 66 and 70);
    –  availability of the written opinion by the International Searching Authority as of the date of international publication (proposed deletion of Rule 44ter and proposed amendment of Rule 94).
  • Appoints the State Intellectual Property Service of Ukraine (SIPSU) as an International Searching and Preliminary Examining Authority. The appointment will become effective from a future date to be notified by the Office.
    See the Report and documents PCT/A/44/3 PDF, PCT/A/44/4 PDF and, for more about the PCT Union - Assembly: Forty-Fourth (19th Ordinary) Session.

Learn the PCT video series

  • Learn the PCT is a series of 29 short videos (approximately 15 minutes each) presented by Matthias Reischle, Deputy Director, PCT Legal Division, WIPO [YouTube]. This series is:
    – designed to provide a basic introduction to important aspects and issues in the international phase and national phase of PCT processing;
    – closely follows material covered during basic PCT training seminars and will be particularly useful for those who have not attended such seminars in person, for small and medium-sized enterprises, and for PCT users and potential users in developing and least-developed countries.

New PCT Contracting State: Islamic Republic of Iran

  • Islamic Republic of Iran (IR) became the 148th PCT Contracting State on 4 July 2013. The PCT will enter into force for that State on 4 October 2013.
    See PCT Newsletter,  July 2013 PDF 

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 PCT Newsletter, May 2013 PDF

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

  • 3rd parties can submit and characterize prior art relevant to novelty and inventive step on published PCT applications via an online system.
    See ePCT Third Party Observations PDF  and document PCT/WG/4/7 PDF.

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; and
    –  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)

  • 98 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.
    See also user experience, Carl Oppedahl [YouTube].

Reminders

PCT Working Group

  • The Summary prepared by the Chair of the PCT Working Group, that took place from May 21 to 24 2013, is now available. The Report adopted by the Working Group is also now available.

Meeting of International Authorities (MIA)

  • The Summary prepared by the Chair of the Meeting of International Authorities under the PCT, that took place from February 11 to 13, 2014 (Tel Aviv, Israel), is now available.

The PATENTSCOPE search engine

  • PATENTSCOPE offers free access to over 32.5 million patent documents in addition to over 2.3 million PCT applications.
  • Contains the national patent data collections of 34 national or regional patent offices.
  • 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 48 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; and
    – 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.

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