World Intellectual Property Organization

PCT NEWSLETTER

www.wipo.int/pct/en

December 2011 | No. 12/2011 

 

New PCT Licensing Feature

WIPO will launch a new PCT feature in January 2012 whereby applicants interested in licensing the inventions contained in their international applications can request the International Bureau (IB) to make this information available on its PATENTSCOPE website.

This new feature has been developed following a recommendation by the PCT Working Group in June 2010 to establish a system for promoting licensing, including the introduction of a register that encourages applicants to signal their willingness to license their patents (document PCT/WG/3/14 Rev., paragraph 129 (page 29)), and the subsequent noting of the development of this feature by the PCT Assembly in September 2010 (document PCT/A/41/4, paragraph 8).

Applicants who are interested in licensing their invention(s) will be able to submit new Form PCT/IB/382 “Request for indication of availability for licensing purposes”, which is available at:

http://www.wipo.int/pct/en/forms/ib/editable/ed_ib382.pdf

or send a letter indicating that the claimed invention(s) is (are) available for licensing. They will also be able to include, in the form or in the letter, further licensing terms. It will be possible to submit such licensing indications at any time from the filing of the international application until the expiration of the 30 month time period.

For international applications which have not yet been filed, applicants will be able to submit their Request for indication of availability for licensing purposes (hereinafter, “licensing availability request”) at the time of filing. When filing the application using PCT-SAFE, applicants should attach that request (using the form or letter) to their application as “Other” under “Accompanying items” and label it “Licensing availability request”. Note that this will not form part of the international application itself and should not be included in the page count of the application.

For international applications which have already been filed, applicants will have to wait until the IB has started processing the application, in order to ensure that it will be in a position to place the form or letter in the correct file. For filings with the IB as receiving Office, applicants will be able to submit their request as soon as they have received Form PCT/RO/105 (“Notification of the international application number and of the international filing date”); for PCT filings with other receiving Offices, applicants will have to wait until the IB has received the record copy (its copy of the international application) and informed the applicant of that receipt by way of Form PCT/IB/301 (“Notification of receipt of record copy”).

Applicants submitting their licensing availability request after filing will be able to submit their request via the PCT Online Document Upload Service (and in the near future, via ePCT); alternatively, their request may be submitted via surface mail or by fax to the IB (to the general number: (+41 22) 338 82 70, or to the specific fax number given at the bottom of any PCT forms that the applicant has received).

The licensing indications will be reflected in the bibliographic data relating to the particular application (under the “Bibliographic data” tab on PATENTSCOPE) but will not be part of the published international application itself. A link will be created between the licensing statement on the bibliographic data page and the content of Form PCT/IB/382 or the letter, allowing third parties to directly access its content; in addition, the licensing availability request will also be available under the “Documents” tab on PATENTSCOPE as a separate document. Furthermore, the existence of licensing indications will be added to the list of search criteria within PATENTSCOPE.

Note that this new feature will be available as from 1 January 2012, for any international application in respect of which the period of 30 months from the priority date has not expired.
 

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