PCT Highlights

The International Patent System

PCT recent and future developments

New PCT Contracting State 

Jordan (country code:  JO)

On 9 March 2017, Jordan deposited its instrument of accession to the PCT, thus becoming the 152nd Contracting State of the PCT, and, on 9 June 2017, will become bound by the PCT.  Consequently, any international application filed on or after 9 June 2017 will automatically include the designation of Jordan.  Also, because Jordan will be bound by Chapter II of the PCT, it will automatically be elected in any demand filed in respect of an international application filed on or after 9 June 2017. 

Furthermore, nationals and residents of Jordan will be entitled, as from 9 June 2017, to file international applications under the PCT.

PCT Milestone: 3 Million Published Applications

The 3 millionth international patent application filed under WIPO’s Patent Cooperation Treaty (PCT) was published on February 2, 2017, marking an important milestone in the history of the Treaty and of WIPO. To mark the occasion, the Director General addressed a letterPDF, The PCT System – Overview and Possible Future Directions and Prioritiesto PCT users and issued a memorandum, entitled “The PCT System — Overview and Possible Future Directions and Priorities”. PDF, The PCT System – Overview and Possible Future Directions and Priorities

PCT Filings in 2016

International patent applications grew by 7.3% to 233,000 in 2016, setting a new annual record. Innovators based in the United States have filed the largest annual number of international patent applications for 39 years running. Still, large increases in patent-filing activity by China-based innovators accounted for much of the overall growth.

The top 5 countries of origin for the year were:

  • United States (56,595)
  • Japan (45,239)
  • China (43,168)
  • Germany (18,315)
  • Republic of Korea (15,560)

See infographic 2016 PDF, press release.

Videos: Highlights Video/[YouTube] | Press Conference Video/[YouTube]

See also PCT Yearly Review 2015

Assembly of the PCT Union

The 48th session of the Assembly of the PCT Union (PCT Assembly) was held in Geneva from 3 to 11 October 2016, as part of the meetings of the Assemblies of the Member States of WIPO.  The PCT Assembly, inter alia:

  • Adopted a number of amendments to the PCT Regulations to extend the deadline for requesting supplementary international search from 19 to 22 months from the priority date, to further add a further small change to Rule 23bis and to remove unnecessary incompatibility provisions (see PCT/A/48/3);
  • Appointed Turkish Patent and Trademark Office as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the PCT. The appointment will become effective from a future date to be notified by the Office when it is ready to begin operations. (see PCT/A/48/4).

For a complete summary, see the PCT Newsletter, October 2016.  All documents for this session are now available and the report shall be available shortly.


ePCT update

An all-new graphical user interface of ePCT was released in March 2017, see video Video and background information.

The following Offices now accept international applications filed using the ePCT-Filing function in the ePCT Portal:

AT Austrian Patent Office
AU Australian Patent Office
AZ State Committee for Standardization, Metrology and Patent of the Republic of Azerbaijan
BG Patent Office of the Republic of Bulgaria
BN Brunei Intellectual Property Office (BruIPO)
BR National Institute of Industrial Property (Brazil)
CA Canadian Intellectual Property Office
CL National Institute of Industrial Property (Chile)
CO Superintendence of Industry and Commerce (Colombia)
CZ Industrial Property Office (Czechia)
CU Cuban Industrial Property Office
DK Danish Patent and Trademark Office
DO National Office of Industrial Property (Dominican Republic)
DZ Algerian National Institute of Industrial Property
EA Eurasian Patent Office
EE Estonian Patent Office
EP European Patent Organisation
FI Finnish Patent and Registration Office (PRH)
HU Hungarian Intellectual Property Office
IB International Bureau of WIPO
ID Directorate General of Intellectual Property (Indonesia)
IL1 Israel Patent Office
IN Indian Patent Office
IR Intellectual Property Center (Islamic Republic of Iran)
IS Icelandic Patent Office
LV Latvian Patent Office
MX Mexican Institute of Industrial Property
MY Intellectual Property Corporation of Malaysia
NO Norwegian Industrial Property Office
NZ Intellectual Property Office of New Zealand
OM Intellectual Property Department, Ministry of Commerce and Industry (Oman)
PA Directorate General of the Industrial Property Registry (DIGERPI) (Panama)
PH Intellectual Property Office (Philippines)
PL Patent Office of the Republic of Poland
PT National Institute of Industrial Property (Portugal)
QA Intellectual Property Department (Qatar)
RU Federal Service for Intellectual Property (Rospatent) (Russian Federation)
SA Saudi Patent Office
SE Swedish Patent and Registration Office
SG Intellectual Property Office of Singapore
SK Industrial Property Office (Slovakia)
TR Turkish Patent and Trademark Office
US1 United States Patent and Trademark Office (USPTO)
ZA Companies and Intellectual Property Commission (CIPC) (South Africa)

1 See Annex C of the PCT Applicant’s Guide for detailed information on the Office’s acceptance of ePCT.

The Moroccan Office of Industrial and Commercial Property (OMPIC) will accept ePCT-Filings shortly.

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 and patent Offices PDF.

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] (see also portuguese-subtitled version prepared by INPI Brazil). 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.

Collaborative search and examination: third pilot started in 2016

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 as well as updates in PCT/WG/6/22 PDF and PCT/WG/7/20 PDF.

The third pilot started on 1 June 2016 and is expected to run for three years (see document PCT/MIA/23/12 PDF).

PCT-Patent Prosecution Highway Pilot (PCT-PPH)

PCT-PPH pathways enable applicants to request a fast track examination procedure.

  • 50 per cent of overall PPH is PCT-PPH.
  • Data from selected Offices shows that PPH requests have a 7.5% to 26% higher grant rate and a 4% to 39.7% higher first Office action allowance rate than all applications combined. The average pendency rate from the PPH request to final decision was between 5.8 and 26.8 months less than for all applications combined.
  • See also user experience, Carl Oppedahl [YouTube].

More about other worksharing initiatives among Offices.

Reminders

PCT Working Group

Meeting of International Authorities (MIA)

  • The 24th session of the Meeting of International Authorities took place from February 8 to 10, 2017 (Reykjavik, Iceland).  The meeting documents and the Summary, prepared by the Chair of the Meeting, are now available.
  • The previous session took place from January 20 to 22, 2016 (Santiago, Chile). The Summary, prepared by the Chair of the Meeting of International Authorities under the PCT, is available.

The PATENTSCOPE search engine

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 8PDF).

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 and PCT/WG/8/6 PDF.

As of 1 July 2017, the time limit for requesting supplementary international search will be extended from 19 to 22 months from the priority date.

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