Niclas Morey, Director International Co-operation PCT developments at the EPO Partnership for Quality, Washington D.C.

European Patent Office Outline  Latest PCT figures at the EPO  NEW: PCT Direct, Search Strategies  Advantages of selecting the EPO as ISA and IPEA  Supplementary International Search  NEW PCT fee payment method at the EPO  Collaborative Search and Examination: pilot phase 3  Entry into European Phase  PCT Filing scenarios for US applicants 2

European Patent Office EPO in PCT : Facts & Figures in 2015  EPO is 3rd RO (2014) with over PCT applications (15.4% of all PCT applications filed). In 2015 Jan-Oct (15.6% of total filings)  EPO is 1st ISA with over international search reports established (38.1% of all ISR established) →market share in US 27% (2015:Q1-3)  EPO is 1st IPEA with around international preliminary examination reports established (58.2%)  EPO as DO: in around applications entered the European phase at the EPO (in 2015 Q1-Q3 of )  Around 62% of EPO’s incoming work (Paris vs PCT route) based on PCT 3

European Patent Office  Relevant for applicants filing a PCT application and claiming priority from a 1 st filing searched by EPO  How? File “PCT Direct letter” with PCT application containing informal comments on objections of earlier search opinion + possibility of showing “track changes” → PCT Direct is free of charge  Examiner will establish ISR and WO-ISA taking into account informal comments on the earlier search opinion  Increase likelihood of receiving positive WOISA letters / month  Since Nov at RO/EP; since July 2015 open to all ROs (see EPO OJ 2015, A51) EPO OJ 2015, A51 4 PCT Direct

European Patent Office Pilot programme on “search strategies”  Information Sheet on Search Strategy annexed to all search reports established by EPO under both PCT and EPC  Contains relevant data on classification, databases and key words used by EPO examiners when performing the search  Available via file inspection in PATENTSCOPE (for PCT) and European Patent Register (for EP)  Service available since 1 Nov and running until end 2016  See OJ EPO 2015, A86OJ EPO 2015, A86 5

European Patent Office Advantages of selecting the EPO as ISA  High quality search (same as for EP search) & Timeliness (ECfS)  Increased legal certainty (ISR and WO highly regarded by designated offices when deciding on grant)  Cost efficiency & acceleration (dispense EP search)  International search fee has been frozen since April 2012 (€ equivalent amount in USD is now only $ 2.097) 6

European Patent Office EPO and PCT – ISA figures 2015 EPO ranks 1 st in the world as ISA, over international search reports were established in 2015, which amounts to 38.1% worldwide 7

European Patent Office Advantages of selecting the EPO as IPEA  EPO may take on its role as IPEA only if it acted also as (S)ISA  Since July 2014, ‘top-up’ search at the outset of Chapter II −no extra cost for applicant −aim: discovering intermediate prior art (i.e. prior art which has become available since ISR was established)  Since 2011, a second written opinion is issued if −applicant filed amendments and there are objections which remain → IPER would be negative if issued based on the file as it stands −aim: enhanced dialogue between applicant and examiner  Use of ePCT to submit Demands is allowed with EPO/IPEA  Fee: € ─ approximately $

European Patent Office EPO and PCT – IPEA figures 2015 EPO ranks 1 st in the world as IPEA with over international preliminary examination reports having been established in 2015, which amounts to 58.2% worldwide 9

European Patent Office Supplementary International Search (SIS)  EPO offers SIS to all PCT applicants irrespective of ROs and ISAs (e.g. where “main” search was done by USPTO or KIPO)  Supplementary search by EPO in international phase is relevant especially if protection in Europe is envisaged (this anticipates EP supp. search)  SIS request should be filed with the IB  SIS fee = ISA fee (payment to be made to the IB)  Same quality, fee and advantages as for EPO's international search e.g. dispensation of supplementary European search  See: OJ EPO 2010, 304 and OJ EPO 2014, A117OJ EPO 2010, 304 OJ EPO 2014, A117 10

European Patent Office NEW PCT fee payment method: Automatic Debiting  Since1 April 2015 fees at EPO may be paid via automatic debiting  How to use it: check relevant box “Mode of Payment” in Form PCT/RO/101  Advantage: all PCT “international phase” fees will be automatically booked  US applicants could use this means of payment with the EPO/ISA when paying additional search fees (non-unity procedure)  Notice: supplementary publication 3 OJ EPO 2015supplementary publication 3 OJ EPO

European Patent Office Collaborative Search & Examination (CS&E) I  Concept: one PCT search performed by a main ISA in collaboration with “peer” ISAs which provide contributions and feedback  Aim: high quality search, increased legal certainty early on in the procedure  Background: CS&E operationally tested under pilot phases 1 and 2 by KIPO, USPTO and the EPO (2010 and 2012)  Pilot phase 3 aims at confirming whether the concept proves to be bringing the expected benefits for both users and participating Offices.  Pilot phase 3: more files would be dealt with over a longer period of time covering entry into national/regional phases 12

European Patent Office Collaborative Search & Examination (CS&E) II  What is intended in terms of fee: aggregated fee of participating ISAs + administrative fee for main ISA if/when pilot enters into production (not applicable to pilot, i.e during pilot phase 3, ISA fee is that of main ISA)  Pilot will be applicant-driven with a limited number of files and a broad pool of applicants  Participation by applicants: details still under discussion, relevant ISA should be directly contacted by applicant for further details  All IP5 Offices invited to participate; project still under discussion; aim is to launch pilot phase 3 by end

European Patent Office Entry into European Phase  Entry into European phase: −by 31 months −early entry possible at any time by submitting an express request for early processing (no special form): compliance with all requirements (OJ EPO 2013, 156)OJ EPO 2013, 156  Only route to protect your invention in FR, NL, BE, IT, LT, MC, IE, GR, MT, CY, LV, SI  As from , revised Rule 164 EPC (OJ EPO 2014, A70):OJ EPO 2014, A70 −search of any invention claimed in the application upon payment of further search fee(s) −further processing of the application on the basis of any invention searched by the EPO 14

European Patent Office Filing Scenarios at the EPO for US applicants (DO:EP) 15 PCT Scenarios International phase European phase TOTAL RO: USPTO ISA: USPTO $ 3.478€ ($ 3.826)$ / € RO: USPTO ISA: EPO $ 3.495€ ($ 2.805)$ / € RO: USPTO ISA: USPTO IPEA: USPTO $ 4.283€ ($ 3.826)$ / € RO: USPTO ISA: EPO IPEA: EPO $ 5.845€ ($ 2.805)$ / € PCT Ch. I PCT Ch. II

European Patent Office 16 Thank you for your attention! Questions: