PCT Update 2015 Mr. Quan-Ling Sim November 12, 2015 Mr. Quan-Ling Sim PCT Outreach and User Relations Section

Outline Membership and statistical update 2014 Decisions of the PCT Assembly October 2015 ePCT Certain PCT features and other matters Future development of the PCT System Information and training

Membership and statistical update

PCT Contracting States (148)

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)

ISA/IPEA status (1) Twenty one (21) Offices currently hold the status as an ISA/IPEA Singapore started operating as an ISA, SISA, and IPEA as from 1 September 2015 Supplementary search fee: CHF 1,571 Accepted languages: English and Chinese Scope of documentation: PCT minimum documentation, and at least the documents in English and Chinese held in its search collection

ISA/IPEA status (2) The Visegrad Patent Institute (VPI) was appointed by the PCT Assembly in October 2015 Czech Republic, Hungary, Poland, Slovakia Notional commencement date of 1 July 2016 Ukraine (appointed in 2013) not yet operational

PCT Applications (2014) 214,500 applications 4.5 % increase over 2013

Filings by country of origin (2014) Examples of increases in certain national Offices CN: +18.7 % US: +7.1 % UK: +9 %

Fields of technology (2014)

Top PCT Applicants (2014) 1. Huawei (CN) – 3442 11. Samsung (KR) – 1381 2. Qualcomm (US) – 2409 12. Toyota (JP) – 1378 3. ZTE (CN) – 2179 13. Bosch (DE) – 1371 4. Panasonic (JP) – 1682 14. Sharp (JP) – 1227 5. Mitsubishi Electric (JP) – 1593 15. NEC (JP) – 1215 6. Intel (US) – 1539 16. LG Electronics (KR) – 1138 7. Ericsson (SE) – 1512 17. Shenzhen (CN) – 1086 8. Microsoft (US) –1460 18. Fujifilm (JP) – 1072 9. Siemens (DE) – 1399 19. United Technologies (US) – 1013 10. Philips (NL) –1391 20. Hitachi (JP) – 996

PCT Union Assembly October 5-14, 2015

Entry into force on 1 July 2016 Request by applicants to omit confidential and private information Transmittal by the receiving Office to the International Bureau of documents supporting requests for the restoration of the right of priority Force majeure for generalized IT failures Languages of correspondence in ePCT to include all ten publication languages

Entry into force on 1 July 2017 Receiving Offices to forward earlier search and/or classification results to the ISA Designated Offices to send timely information to the IB concerning national phase entries, national publications, and grants (Offices encouraged to comply earlier if possible)

Other decisions Took note of a report on the review of the Supplementary International Search system; next review in 2020 Deferred discussion on currency “hedging” to guard against loss of income http://www.wipo.int/meetings/en/details.jsp?meeting_id= 36343

ePCT for Applicants

ePCT (1) The global portal for managing PCT applications 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

ePCT public services (2) Create a WIPO User Account using the WIPO Accounts service https://pct.wipo.int/wipoaccounts/ePCT/public/register.jsf Documents (PDF format) can be uploaded to the IB for all PCT applications held in the IB’s electronic system – a practical alternative to fax and paper; e-mail should NOT be used for submitting documents User Guide for Document Upload available http://www.wipo.int/export/sites/www/pct/en/epct/pdf/transit ion__to_epct_for_document_upload.pdf

ePCT private services (3) http://pct.wipo.int/epct Obtain/Upload a “supported” certificate for additional authentication WIPO digital certificate EPO digital certificate (smart card) JP SECOM digital certificate Note: USPTO digital certificates are NOT supported

ePCT best practices (4) 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, Article 19 amendments, etc. Prepare documents electronically and sign them using a text string signature, e.g., / John Smith / Print to PDF and submit file in ePCT

Future developments (5) Progressive extension of ePCT-Filing to other receiving Offices Support alternative filing methods in ePCT-Filing, e.g., download package Extension of online payment function to other types of fees post-filing Template in ePCT public services for preparing requests under Rule 92bis

Certain PCT features and other matters

WIPO Pearl Launched in September 2014 Multilingual terminology portal which gives access to scientific and technical terms derived from patent documents Available in all ten PCT languages Helps to promote accurate and consistent use of terms across different languages and makes it easier to search and share scientific and technical knowledge All content validated with reliability scores Integrated with PATENTSCOPE Further details can be found at: www.wipo.int/wipopearl/search/home.html

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 Length of text permitted for observations has been increased Additional arguments may be uploaded as PDF documents, e.g., where formulae are required Submissions possible until the expiration of 28 months from the priority date

Licensing Upon request, PCT applications may be highlighted as being available for license on PATENTSCOPE On-line action in ePCT Form PCT/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 Free of charge

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, RU,SE, SG and XN

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 http://www.wipo.int/pct/en/filing/pct_pph.html http://www.jpo.go.jp/ppph-portal/index.htm

PCT Direct (1) New service offered by the EPO since 1 November 2014, and Israel Patent Office (ILPO) since 1 April 2015 During the PCT procedure, applicants can address patentability issues raised in the search opinion established by the EPO or ILPO for the priority application

PCT Direct (2) Aims at improving the efficiency and quality of the procedure before the ISA by allowing the applicant to file informal comments on the earlier search Further details can be found on the EPO website: http://www.epo.org/law-practice/legal-texts/official- journal/2014/09/a89.html Further details can be found on the ILPO website: http://index.justice.gov.il/En/Units/ILPO/Departments/PC T/News/Pages/PCTDirect.aspx

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 Examples of such misleading invitations can be viewed on our website at the following link: http://www.wipo.int/pct/en/warning/pct_warning.html

Arbitration and Mediation Center Fee Reductions Independent and impartial body that offers alternative dispute resolution options for the resolution of commercial disputes between private parties (time and cost efficient alternatives to litigation) 25% lifetime reduction on AMC’s registration and administration fees where at least one party to the dispute has been named as an application or inventor in a published PCT application (no relationship to the dispute is required) Fee calculator http://www.wipo.int/amc/en/calculator/adr.jsp

Future developments of the PCT system

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

Examples of matters considered by the PCT Working Group Agenda of May 2015 meeting 23 documents, available in the 6 official UN languages http://www.wipo.int/meetings/en/details.jsp?meeting_id=35 593 Summary by the Chair: http://www.wipo.int/edocs/mdocs/pct/en/pct_wg_8/pct_wg_ 8_25.pdf

Information and training

PCT information and training PCT Highlights http://www.wipo.int/pct/en/highlights/index.html PCT Newsletter http://www.wipo.int/pct/en/newslett/ Learn the PCT videos http://www.wipo.int/pct/en/training/index.html PCT Distance Learning Course in all ten PCT languages http://www.wipo.int/pct/en/distance_learning/index.html PCT Webinars http://www.wipo.int/pct/en/seminar/webinars/index.html 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

Need more information? PCT Resources http://www.wipo.int/pct/en/ PCT Information Service Telephone: (+41-22) 338 83 38 Facsimile: (+41-22) 338 83 39 E-mail: pct.infoline@wipo.int

Recording and Survey Today’s webinar and slides will be available for download from the PCT webinar page over the next few days: http://www.wipo.int/pct/en/seminar/webinars/index.html Survey on today’s webinar presentation