PCT Highlights

The International Patent System

PCT recent and future developments

New PCT Contracting State

Samoa (country code:  WS)

On 2 October 2019, Samoa deposited its instrument of accession to the PCT, thus becoming the 153rd Contracting State of the PCT, and on 2 January 2020, will become bound by the PCT.  Consequently, any international application filed on or after 2 January 2020 will automatically include the designation of Samoa.  Also, because Samoa 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 2 January 2020. 

Furthermore, nationals and residents of Samoa will be entitled, as from 2 January 2020, to file international applications under the PCT.

Launch of the WIPO IP Portal

On September 17, 2019,WIPO launched its new IP Portal, a one-stop shop which integrates a full range of WIPO IP services, including ePCT (more about ePCT for Applicants and Third Parties and ePCT for Authorities and Offices); further reading: PCT Newsletter No. 09/2019.

Proposed amendments to the PCT Regulations (July 1, 2020) agreed by the PCT Working Group

The Working Group agreed to submit the following amendments to the PCT Regulations for approval by the PCT Assembly at its session in September/October 2019 2019 (meeting documents are available):

  • in the case of erroneously filed elements and parts in an international application, provisions to incorporate by reference the correct elements or parts;
  • 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;
  • 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;
  • 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; and
  • provision of a legal basis for the correction or addition of indications in the request provided for in PCT Rule 4.11 during the international phase.

Further information is available in the PCT Newsletter June 2019, 06/2019PDF.

Amendments to the PCT Regulations (July 1, 2019)

The amendment to PCT Rule 69.1(a), adopted by the 50th session of the Assembly of the PCT Union (PCT Assembly), entered into force on 1 July 2019. The amendments allow the International Preliminary Examining Authority to start international preliminary examination once it is in possession of:

  • the demand for international preliminary examination;
  • the relevant fees;
  • either the international search report or the declaration by the International Searching Authority under PCT Article 17(2)(a); and the written opinion established under PCT Rule 43bis.1

unless the applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the applicable time limit under PCT Rule 54bis.1(a).

This amendment will apply to any international application for which a demand for international preliminary examination is filed on, or after, 1 July 2019.

The PCT Yearly Review, 2019 edition

The 2019 edition of the PCT Yearly Review summarizes PCT activities and developments in 2018.

In brief, international patent applications grew by 3.9% to 253,000 in 2018.  Applicants based in the United States of America maintained their number one ranking, followed very closely by China.

The top 5 countries of origin for the year were:

  • United States (56,142; 22.2%)
  • China (53,345; 21.1%)
  • Japan (49,702; 19.6%)
  • Germany (19,883; 7.9%)
  • Republic of Korea (17,014; 6.7%)

The special theme this year is “40 years of the Patent Cooperation Treaty” and analyzes the long‑term filing trends for the international and national phases of the PCT since 1978.

For further information consult PCT Yearly Review 2019; press release March 2019; Press Conference.

PCT Working Group

The twelfth session of the PCT Working Group took place from June 11 to June 14, 2019. The meeting documents and the Summary, prepared by the Chair of the Meeting, and the draft Report are now available.

Meeting of International Authorities (MIA)

The 26th session of the Meeting of International Authorities took place from February 13 to February 14, 2019 in Cairo, Egypt, and the meeting documents and the summary by the Chair of the meeting are available.

PCT Collaborative search and examination: third pilot launched 1 July 2018

After having completed the first and second pilot (see evaluation report PDF), the operational phase of the third pilot was launched on July 1, 2018  and is expected to run for at least three years; for further general information and for information on the current acceptance of requests at the respective Offices see Collaborative Search and Examination (and document PCT/WG12/15).

ePCT update

The latest releases, include an external signature function, see video Video

A new Contingency Upload Service was released as an alternative mode of communication at the International Bureau to decommissioning the fax transmission by 31 December 2019 (in particular, for the rare cases that ePCT is unavailable) (further information).

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

See list of Offices accepting ePCT-Filing.

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.

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 between January and June 2018 shows that PPH requests have a 15.8% to 30% higher grant rate and a 14.5% to 34.9% higher first Office action allowance rate than all applications combined. The average pendency rate from the PPH request to final decision was between 2.6 and 22.7 months less than for all applications combined:  consult JPO PPH webpage:  consult also Yearly Review 2019 PDF, C26
  • Further available: video on user experience, Carl Oppedahl [YouTube].

More about other worksharing initiatives among Offices.

Reminders

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 Patent Office). 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.

Introductory PCT Distance learning course

The DL101PCT 4 hours 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.

PCT Webinars

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.

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.

The PATENTSCOPE search engine

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).

WIPO GREEN

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 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.

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