PCT Update 2014 November 2014 Mr. Quan-Ling Sim Head, PCT Outreach and User Relations Section

Outline Membership and statistical update Decisions of the PCT Assembly ePCT Certain PCT features and other matters Future development of the PCT System Information and training 2

MEMBERSHIP AND STATISTICAL UPDATE 3

4 PCT Contracting States (148)

5 Countries not yet PCT Contracting States Afghanistan Andorra Argentina Bahamas Bangladesh Bhutan Bolivia Burundi Cambodia Cape Verde Democratic Republic of Congo Djibouti Eritrea Ethiopia Fiji Guyana Haiti Iraq Jamaica Jordan Kiribati Kuwait Lebanon Maldives Marshall Islands Mauritius Micronesia Myanmar Nauru Nepal Pakistan Palau Paraguay Samoa Solomon Islands Somalia South Sudan Suriname Timor-Leste Tonga Tuvalu Uruguay Vanuatu Venezuela Yemen (45) (Membership of the United Nations is 193 countries)

International Authorities National Institute of Industrial Property (Chile) was appointed an International Searching and Preliminary Examining Authority (ISA/IPEA) by the PCT Assembly in October 2012 Chile has started operating as an ISA/IPEA as from 22 October 2014 Twenty Offices now hold this status including most recently Ukraine (2013) and Singapore (2014) 6

7 PCT Applications (2013) 205,300 applications 5,1 % increase over 2012

8 Examples of increases in certain national Offices CN: % US: % SE: % Filings by country of origin (2013)

Fields of technology (2013) 9

10 Top PCT applicants (2013) 1.Panasonic--JP (2881) 2.ZTE--CN (2309) 3.Huawei--CN (2094) 4.Qualcomm--US (2036) 5.Intel--US (1852) 6.Sharp--JP (1840) 7.Bosch--DE (1786) 8.Toyota--JP (1696) 9.Ericsson--SE (1467) 10.Philips--NL (1423) 11. Siemens--DE (1323) 12. Mitsubishi Electric--JP (1312) 13. Samsung --KR (1193) 14. NEC--JP (1190) 15. LG Electronics--KR (1170) 16. Fujifilm --JP (1008) 17. Shenzhen--CN (916) 18. Sony--JP (915) 19. Hitachi --JP (841) 20. Nokia--FI (807)

DECISIONS OF THE PCT ASSEMBLY 11

Decisions of the PCT Assembly (1) Appointment of the Intellectual Property Office of Singapore (IPOS) as an ISA/IPEA Effective from a future date to be notified by the Office Adopted a modified procedure for the appointment of future International Authorities 12

Decisions of the PCT Assembly (2) Restoration of the right of priority (after 1 July 2015) Amendment of PCT Rules 49ter and 76 In cases of early national phase entry, restoration requests are to be made within 1 month from receipt of entry request Copy of General Power of Attorney (after 1 July 2015) Amendment of Rule 90.5(d) Legal basis that allows the International Bureau to require a copy of a general power of attorney to process a withdrawal 13

Decisions of the PCT Assembly (3) Editorial correction of rule reference in PCT Rule 90.3 concerning agents and common representatives Schedule of fees Reduction for PCT-EASY filings discontinued as from 1 July 2015 New means for determining the 90% filing fee reduction for natural persons from certain States based on a combined criteria of income and innovation 14

ePCT THE GLOBAL PORTAL FOR MANAGING PCT APPLICATIONS 15

ePCT Private Services Full suite of functions with authenticated access Login with WIPO user account and digital certificate Management of secure access rights between associates Online access to PCT applications “Actions” to conduct PCT transactions Web filing (ePCT-Filing) with participating receiving Offices including RO/IB, RO/AT, RO/SE 16

ePCT Public Services Limited range of functions Non-authenticated access Login via WIPO user account Submission of post-filing documents Third party observations 17

Practical Tips Use ePCT private services Digital certificates for authentication are available free-of-charge from WIPO Use Actions to conduct transactions such as Rule 92bis changes, filing of Chapter II demands, etc. Prepare documents electronically and sign them using a text string signature, e.g., / John Smith / Print to PDF and submit file in ePCT 18

CERTAIN PCT FEATURES AND OTHER MATTERS 19

WIPO Pearl Multilingual terminology portal which gives access to scientific and technical terms derived from patent documents Developed in-house by PCT translation experts Available in all ten PCT languages Helps promote accurate and consistent use of terms across different languages making it easier to search and share scientific and technical knowledge All content validated with reliability scores Integrated with PATENTSCOPE 20

Third Party Observations Online system that allows third parties to submit and characterize prior art relevant to novelty and inventive step Limited to the international phase Copies of citations should be included Length of text permitted for observations has been increased Additional arguments may be uploaded as PDF documents, e.g., where formulae are required 21

Licensing PCT applications may be highlighted as being available for license on PATENTSCOPE On-line action in ePCT Form PCT/IB/382PCT/IB/382 Can be submitted at any time prior to the expiration of 30 months from the priority date Effective means of advertising and identifying potential licensees 22

Supplementary International Search Optional feature of the PCT System Performed by a different International Authority Useful for searches in different language collections In some instances, can also be used to search subject matter not searched by the original International Searching Authority, e.g., methods of medical treatment Service provided by AT, EP, FI, SE, RU and XN 23

PCT-PPH Accelerated national phase processing on the basis of a positive PCT product Introduction of Global Patent Prosecution Highway (PPH) pilot in January 2014 Single set of qualifying requirements that simplifies the existing PPH network so that it is more accessible to users Includes PCT work products Links

PCT Direct New service offered by the European Patent Office (EPO) as of November 1, 2014 Provides a link between a PCT application filed with RO/EP and an earlier-filed priority application searched by the EPO During the PCT procedure, applicants can address patentability issues raised in the priority application before ISA/EP Further details can be found on the EPO website ( journal/2014/09/a89.html) 25

26 Misleading WIPO Invitations WIPO has issued warnings regarding misleading invitations for payment of fees Be vigilant and don’t be deceived by invitations which look similar to those issued by WIPO Bring to the attention of WIPO and to consumer protection authorities instances of misleading invitations

Arbitration and Mediation Center Fee Reductions 25% fee reduction for the Arbitration and Mediation Center (AMC) where at least one party to the dispute has been named as an application or inventor in a published PCT application Fee calculator 27

FUTURE DEVELOPMENT OF THE PCT SYSTEM 28

PCT Working Group Technical committee that meets on an annual basis Discusses a range of policy, operational, and legal matters Some of the work results in proposals to amend the PCT Regulations which are submitted to the PCT Assembly for decision 29

Examples of matters considered by the PCT Working Group (1) ePCT developments Color drawings Fee reductions for small and medium-sized enterprises, universities, not-for-profit research institutes Coordination of technical assistance Transmission of search and classification data to ISAs by receiving Offices Availability of non-patent literature databases Incorporation by reference procedure PCT 20/20 improvements 30

Examples of matters considered by the PCT Working Group (2) Transmission of electronic search copies (eSearchCopy) Revision of WIPO Standards and interface with the PCT Liberalization of the right to practice before the receiving Office of the International Bureau Formal integration of PPH into the PCT Excuse provisions for failures in electronic communications Time zones used for electronic filing 31

INFORMATION AND TRAINING 32

PCT Information and Training PCT Brief PCT Newsletter Learn the PCT video series PCT Distance Learning Course in all ten PCT languages PCT Webinars Free updates on developments in PCT procedures Available on request for companies or law firms On-site PCT seminars and training sessions Annual advanced PCT seminar at WIPO in October 33

34 Need more information? PCT Resources PCT Information Service Telephone: (+41-22) Facsimile: (+41-22)

Recording and Survey Today’s webinar and slides will be available for download from the PCT webinar page over the next few days: Survey on today’s webinar presentation 35