New Video on the PCT: Seeking Patent Protection Beyond Borders
This new PCT overview video Video (available on the PCT website in 10 PCT publication languages) is intended for business owners, individual inventors and students. Patent attorneys may likewise use the video to help inform clients about their choices for seeking patent protection in foreign countries.
PCT Working Group and PCT Committee for Technical Cooperation
The thirteenth session of the PCT Working Group and the thirty first session of the PCT Committee for Technical Cooperation was held in Geneva from 5 to 8 October 2020 in the form of a hybrid meeting. It discussed inter alia:
- Implementation of WIPO Standard ST.26 in the PCT: It was agreed to submit amendments to the PCT Regulations for approval by the PCT Assembly at its session to be held in the first half of 2021. The amendments would enable WIPO Standard ST.26 for the presentation of nucleotide and amino acid sequence listings using XML to apply to international applications filed on or after 1 January 2022 (refer also to free online tool WIPO Sequence for preparation of such sequence listings).
- Review of Supplementary International Search: The Working Group recommended to maintain the current supplementary international search system.
- Strengthening PCT Safeguards in Case of General Disruption: The Working Group considered a proposal (by the European Patent Office (EPO), France, Switzerland and the United Kingdom) to allow an office to extend time limits in the PCT Regulations in case of general disruption where the office is located. A revised proposal and a report on the experiences of offices in the implementation of the interpretative statement and recommended PCT practice changes in light of the COVID‑19 pandemic will be discussed at the next session of the working group.
- Appointment of International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA): The Committee recommended to the PCT Assembly that the Eurasian Patent Office (EAPO) be appointed as an ISA/IPEA under the PCT.
The Summary by the Chair and the working documents are available. The Summary by the Chair of the Committee on Technical Cooperation is also available.
Amendments to the PCT Regulations
On 1 July 2020, the following amendments to the PCT Regulations and consequential modifications to other PCT Texts and Forms entered into force:
- in the case of erroneously filed elements and parts in an international application, provisions to incorporate by reference the correct elements or parts (Rules 20.5bis and 40bis and other consequential changes);
- provision of a legal basis for the transfer via the International Bureau (IB) of fees collected by one Office for the benefit of another Office (Rule 96.2 and other consequential changes);
- a requirement for the International Preliminary Examining Authority (IPEA) to copy certain documents from its file to the IB, which the IB would make available to the public on behalf of the elected Office (Rules 71 and 94);
- provision of a legal basis for an Office to excuse delays in meeting a time limit due to the unavailability of any permitted electronic means of communication at that Office, such as unforeseen outages or scheduled maintenance (Rule 82quater.2); and
- provision of a legal basis for the correction or addition of indications in the request provided for in Rule 4.11 during the international phase (Rule 26quater).
The text of the amended provisions (and the applicable Understanding of the Assembly) is contained in the Annexes to PCT Assembly document A/51/2. Further information is available in the following PPT presentation/webinar and PCT Newsletter October 2019, 10/2019; for more information on access to documents in the file of the IPEA, consult also Practical Advice in PCT Newsletter 09/2020 (page 11); further information on unavailability of electronic means of communication is available.
Meeting of International Authorities (MIA)
50th Anniversary of Diplomatic Conference on the PCT
In June 2020, the PCT marked the 50th Anniversary of the Diplomatic Conference on the PCT, which took place in Washington, D.C., United States of America from 25 May to 19 June 1970. The Diplomatic Conference resulted in the adoption of the Patent Cooperation Treaty and Regulations. For further information, please refer to PCT Newsletter June 2020, 06/2020 and to a presentation about the 1970 Diplomatic Conference . A video interview with a delegate who participated at the 1970 conference (Mr. Kiyoshi Asamura) is also available.
PCT COVID-19 measures
- The International Bureau (IB) of WIPO and the receiving Office of the International Bureau (RO/IB) remain open for PCT operations.
- The IB interprets the COVID-19 pandemic as falling under PCT excuse of delays provision PCT Rule 82quater.1
- The RO/IB decided to delay the issuance of notifications declaring international applications considered withdrawn for example, for having failed to pay the appropriate fees within the prescribed time limit (Form PCT/RO/117) until May 31, 2020 (later extended to June 30, 2020), and urged all PCT receiving Offices to adopt the same practice. The extended period ended on June 30, 2020.
- The IB invites applicants to provide email addresses for electronic communication with the IB.
- A dedicated webpage on COVID-19 update: PCT System is also available, including updated information on the status and potential remedies for time limits and extensions as well as webinars.
PCT and IP data reports 2020
The World Intellectual Property Indicators – 2020: The report provides an annual overview of intellectual property (IP) activity around the globe in 2019. Patent applications worldwide decreased by 3% in 2019 – the first decline since the 2009 financial crisis. For highlights of the report, please consult the press release.
The PCT Yearly Review 2020: In 2019, use of the PCT continued to grow, with a record‑breaking estimated 265,800 PCT applications, representing a 5.2% increase over 2018. For further information, please consult the PCT Yearly Review 2020 . This year’s special theme in the PCT Yearly Review provides a descriptive analysis of filing activities in the top 50 PCT clusters , page 7; refer also to WIPO Press Release PR/2020/848 and PCT Newsletter April 2020, 04/2020.
Italian Patent and Trademark Office: Opening of National Route
The Italian Patent and Trademark Office has reopened the national route for obtaining patent protection via the PCT on 1 July 2020. Therefore, any international application filed on or after 1 July 2020 includes the designation for the grant of a regional (European) patent and also a national patent in Italy (For further information, please refer to PCT Newsletter May 2020, 05/2020).
Latest Information on PCT Contracting State
United Kingdom (country code: GB): extension of PCT to Gibraltar and Guernsey
From 1 January 2021, the PCT, and the Paris Convention, were extended by the United Kingdom to the territory of Gibraltar (for further information, please refer to Notifications). The PCT will be extended by the United Kingdom to the territory of the Bailiwick of Guernsey on 23 March 2021 (for further information, please refer to Notification).
Samoa (country code: WS)
On 2 January 2020, the PCT entered into force in Samoa as the 153rd Contracting State of the PCT. Consequently, any international application filed on or after 2 January 2020 automatically includes the designation of Samoa. Also, because Samoa is bound by Chapter II of the PCT, it is automatically elected in any demand filed in respect of an international application filed on or after 2 January 2020. Furthermore, nationals and residents of Samoa are entitled, as of 2 January 2020, to file international applications under the PCT.
WIPO PROOF: Trusted Digital Evidence for your Intellectual Assets
On 27 May 2020, WIPO launched WIPO PROOF, a new online service creating a date- and time-stamped fingerprint of a digital file. For further information, please refer to PCT Newsletter June 2020, 06/2020. Since January 2021, the service is available in 10 languages.
Interesting features of the many recent ePCT releases include an external signature function (see video Video) and a navigation bar for WIPO’s new IP Portal. The IP Portal has been recently updated with new MENU features (please refer to PCT Newsletter November 2020, 11/2020 .
A Contingency Upload Service was released in 2018 as an alternative mode of communication at the International Bureau to the limitation of fax services to emergency situations by 1 January 2020 (in particular, for the rare cases that ePCT is unavailable) (further information is available on the Contingency Upload Service and on limited fax services ).
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 .
RO/IB will no longer accept electronic filing with PCT-SAFE from 1 July 2021.
Learn the PCT video series
A series of 29 short videos (approximately 15 minutes each) presented by Matthias Reischle-Park, Deputy Director, PCT Legal and User Relations Division, WIPO [YouTube] (also available Portuguese-subtitled version prepared by INPI Brazil and Arabic-subtitled version prepared by the Saudi Authority for Intellectual Property (SAIP)). This series is:
- designed to provide a basic introduction to important aspects and issues in the international phase and national phase of PCT processing; and
- 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.
- PCT Webinars are used to deliver PCT information, training and updates in ten languages free of charge; recorded webinars are available at PCT Webinars.
- In‑house seminars on the PCT with WIPO’s participation are available; for seminars open to the public consult the PCT Seminar Calendar. PCT presentations with the context of Roving Webinars on all WIPO Services and Initiatives were added in May 2020 and Advanced Webinars with regional focus in October/November 2020.
Introductory PCT Distance learning course
- The DL101PCT 4 hour course provides an introduction and general overview of PCT; it is complemented with self-assessment tools that are strategically placed throughout the course to measure understanding and progress and it is available in ten languages.
Supplementary International Search
- Requesting one or more supplementary international searches (SIS), during the international phase procedure, expands both the linguistic and technical scope of the search
- SIS addresses PCT applicants’ concerns about new prior art being found once they have already 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.
- Get an introduction into SIS by a short video Video or the relevant part of the Applicant’s Guide.
The PATENTSCOPE search engine
- PATENTSCOPE offers free access to over 4 million PCT applications in addition to 94 million patent documents.
- Contains the national patent data collections of 69 national or regional patent Offices.
- The interface features a number of powerful tools, including cross-lingual and chemical compound (including substructures) searches, XML data and hyperlinks to citations in international search reports, as well as machine translation. Information on patent families was added recently.
- Information on national phase processing of PCT applications is now available for 79 Offices. Global Dossier public information is available for 10 Offices.
- The redesigned version of the Patent Register Portal contains legal status information for over 200 national and regional collections, including a search functionality by PCT application number. The new tool WIPO Inspire provides a collection of reports on different functionalities of patent databases.
The WIPO Digital Access Service (DAS) is an electronic system allowing priority documents and similar documents to be securely exchanged between participating intellectual property (IP) offices, including for PCT purposes (further information). DAS is generally free of charge and simplifies providing priority documents previously exchanged by paper. Many Offices joined DAS recently (consult WIPO DAS News).
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 show that PCT-PPH requests have a higher grant rate and a higher first Office action allowance rate than all applications combined. The average pendency rate from the PCT-PPH request to final decision less than for all applications combined consult JPO PPH webpage: and the PCT Yearly Review 2020 , C28
- Further available: video on user experience, Carl Oppedahl [YouTube].
More about other worksharing initiatives among Offices.
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).
WIPO Inventor Assistance Program
The WIPO Inventor Assistance Program (IAP) aims at matching developing country inventors and small businesses with patent attorneys providing pro bono legal assistance.
PCT Highlights – High-level overview of recent and future developments in the PCT. 1-2 per year.Sign up